If you've ever owned (or wanted) a pair of UGGS, then you've probably come across the debate: which are the real UGGs? The reason for this question was the viral video created by UGG, Since 1974.
There is good reason for this confusion – EVERYONE seems to be using the exact same UGG brand, some with a big "G" and others with similar-sized letters.
The history surrounding the UGG trade mark ownership is a brilliant case-study and can teach us important lessons about global brand protection and IP strategy.
The Origins of Ugg Boots
The exact history of the 'ugg boot' is unclear. What is clear is that they originated in Australia. According to 'ugg folklore', the term "UGG" originated from a slang reference to the boots being ugly (apologies to Ugg lovers across the globe). The boots gained prominence during the 1960s when Australian surfers began wearing them. By the 1970s, ugg boots started to make their way into global surf culture, especially in the United States and the United Kingdom.
This is the key departure point in the brand ownership story – the development of the brand in the USA versus Australia. However, to make it simple – the players in this story are Deckers Outdoor Corporation (who owns the UGG trade mark with the big 'G') versus... everyone else.
Trademark Disputes and Ownership: The Battle for "Ugg"
The main trade mark battle surrounding Ugg boots arose between Australian manufacturers and the California-based Deckers Outdoor Corporation ("Deckers"). A brief summary of how we got to this position is set out below.
Australia
In 1971, Shane Steadman registered the trade mark UGH-BOOT in Australia and later registered the mark UGH. Steadman sold his UGH trade marks to Ugg Holdings Inc. In 1995, Deckers acquired Ugg Holdings Inc. However, in Australia, the term "ugg" remained generic (even making its way into the dictionary), and local manufacturers continued to use it freely.
USA
On the other side of the ocean, in 1978, Australian surfer Brian Smith and Doug Jensen started distributing sheepskin boots in the United States. In 1995, Deckers acquired Smith's business. Deckers had already successfully trademarked "UGG" in the US in 1985, and by the late 1990s, they had turned the brand into a luxury fashion item. They proceeded to register the UGG trade mark (with a big 'G') in over 130 countries.
The distinction between the two markets became a point of contention as Deckers began sending cease-and-desist letters to Australian manufacturers. A landmark case in 2006 saw the Australian Sheepskin Association contest Deckers' claims, arguing that "ugg" was a generic term and not subject to trade mark protection in Australia. The Australian courts agreed and granted local (Australian) manufacturers the right to use the term "ugg" within the country. However, Deckers retained exclusive rights to the trade mark in jurisdictions like the U.S., Europe, and China.
Deckers have actively enforced their rights, which has resulted in Australian UGG boot manufacturers being restricted to selling only in Australia (and those countries where Deckers has not acquired rights). Given that the total value of the ugg boot market size is estimated to be valued at USD 2,7 billion, this is a significant advantage for Deckers, who notably are not restricted from selling their products in Australia.
Key Lessons
Deckers strategically outmanoeuvred the entire market by registering its "UGG" trade mark in approximately 130 countries. This shows the importance of global brand management strategy in not only building a brand but more importantly securing your right to trade in those markets. Decker's aggressive trade mark enforcement has prevented Australian manufacturers from selling their products overseas (including via the internet). This strategy has helped Deckers to capture the lion's share of the ugg market (albeit not without controversy). The case also highlights the risk of selecting generic brands.
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