South Africa: UGG, What A Legal Mess!

Last Updated: 24 November 2017
Article by Gaelyn Scott

Most Read Contributor in South Africa, July 2019

There's an interesting trade mark dispute under way about UGG. It touches on a range of IP issues – geographical indications, generic terms, country-of-origin brands and Chinese manufacture.

Many readers will know that UGG is a sheepskin boot originating from Australia. UGG has apparently been around since the1930s, when it was created to deal with the cold winters in Australia (the Blue Hills region of New South Wales apparently can get cold). For some, the UGG boot is not particularly aesthetically pleasing, so it tends to be worn as a slipper.

Not in the US, however, where the UGG is something of a fashion item. UGG is also a registered trade mark in the US, and the registration belongs to a US company. The US company is now suing an Australian company that makes UGG footwear and exports it to the US. The US company alleges trade mark infringement and is claiming damages and delivery-up of the allegedly infringing goods. There have seemingly been some negotiations between the parties and the US company would like the Australian company to limit its sales to Australia and New Zealand. For obvious reasons, the Australian company wants to be able to export worldwide.

The US company is called Deckers and it apparently has registrations for UGG in a number of key markets including China, Japan and the EU – it seems that the US trade mark registration originally belonged to an Australian surfer who established a market in the US and then sold the trade mark. The Australian company that's being sued is called Australian Leather, and is small, with 40 employees and sales of 50 000 pairs annually. The two companies have bashed heads before. A few years back, Australian Leather complained about the fact that Deckers was selling footwear in Australia under the trade mark UGG Australia, whereas the product was in fact manufactured in China. The complaint was that the use of the word "Australia" was misleading, although there was also a suggestion that the Chinese manufacture enabled Deckers to under-cut Australian companies. Deckers responded by dropping "Australia" from the name.

The man behind Australian Leather, Eddie Oygur, is making all the right noises: "UGG is just the name for the boots, and we've sold them for nearly a century ... now a US giant has trademarked the name and wants to stop us." His company will be seeking to cancel the US trade mark registration, despite the fact that a previous challenge based on the generic nature of the trade mark failed. Oygur has the backing of an Australian senator, who says that UGG is to Australia what Champagne is to France, what Sherry is to Spain, what Port is to Portugal, and what Feta is to Greece. In other words, UGG is one of those names or geographical indications that should be protected.

It does seem that the issue of UGG has some history in Australian trade mark law. The trade mark Ugh-Boots was once registered in Australia by a surfer but it was later removed for non-use. At one stage, there was talk of an Australian Sheepskin Association protecting UGG as a generic name, but in 2010, a company called Luda was granted protection for the trade marks UGG Australia & Device and Made by UGG Australia, despite opposition by Deckers. It all sounds rather messy.

A branding expert from the University of Adelaide, Dean Wilkie, has added an interesting angle to this. He says that what Deckers is doing is trading on "secondary association, which in this case is the Australian lifestyle". Wilkie says that Deckers "plaster the boots with Australian images, and give consumers a strong country-of-origin perspective ... it portrays a laid-back, yet positive mood, which in turn puts the buyer in a positive frame of mind to buy." According to Wilkie, many consumers buy "country-of-origin" products not really caring where they are actually made, because "we are so numb to buying goods made in China." Interestingly, he says that UGG boots aren't really worn in public in Australia because they are a "bit daggy", and they're usually sold to tourists: "In the US it is seen as classy, just a little bit different, and a little edgy."

For South African readers, this may be somewhat reminiscent of rooibos. When it came to light that a US company had a US trade mark registration for the name of South Africa's much-loved tea, a registration that it would be using to stop South African companies exporting rooibos to the US, there was an outcry. In that case, the US registration had been obtained by a South African who eventually sold the business and trade mark to a US company. After much noise and bluster, the US company agreed not to enforce the registration against South African exporters. Ever since, the issue of geographic indications and designations of origin has been a hot topic in South Africa, with the government promising to take steps to ensure that names like rooibos are protected locally through laws, and abroad through international agreements.

The UGG story may also make some South Africans think about their iconic shoe, the velskoen. Although "vellies" are by no means regarded as infra dig by locals, they probably aren't that popular with millennials or fashionistas and, although they are bought by some tourists, they probably don't have the iconic status of UGG. However, it would still be pretty galling if South African manufacturers suddenly discovered that they could no longer export vellies because of trade mark registrations belonging to foreigners.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions