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Deckers’ trade mark registration for UGH-BOOTS dates back to 1971, and covers “boots, shoes and slippers” in Class 25. Bruce McDougall and Bronwyn McDougall (the McDougalls) were concerned by Deckers’ actions, and they retaliated against the potential infringement threat by filing an application to remove the UGH-BOOTS trade mark from the Australian Trade Marks Register on the basis that the trade mark had not been used as a trade mark in the Australian marketplace during a three (3) year period.
Deckers opposed the removal application, relying primarily on an advertisement that appeared in a Sydney newspaper during the relevant period, as well as its use of the mark on its website (www.uggaustralia.com). Both the newspaper advertisement and the website referred to UGH BOOTS, UGH, UGG and UGG AUSTRALIA (rather than the registered mark, UGH-BOOTS).
The Hearing Officer firstly considered whether there had been any sales of products under the UGH-BOOTS trade mark by Deckers in the Australian marketplace. Deckers claimed that it had sold boots to Australian consumers, although its website only permitted orders from the USA, Canada and the United Kingdom. The McDougalls filed conflicting evidence attesting to the fact that orders placed were never received, and the Hearing Officer therefore gave little weight to the claim that there had been actual sales of goods in Australia.
The McDougalls also argued that even if there had been sales in Australia, the boots were not sold by reference to the “trade mark” UGH-BOOTS, but only by reference to generic terms.
The Hearing Officer then considered whether the use made of the terms UGH, UGG, UGH BOOTS and UGG AUSTRALIA by Deckers was use of the UGH-BOOTS trade mark, or use of the trade mark “with additions or alterations not substantially affecting its identity”.
In deciding this issue, the Hearing Officer firstly considered whether the terms “ugh boots “ugg boots” and “ug boots” were generic descriptions in the Australian marketplace. After consideration of various dictionary definitions, telephone directory listings, manuals, surfing magazines and internet searches, the Hearing Officer decided that these were all generic terms used by people in the Australian marketplace to describe sheepskin boots.
After deciding that those were generic terms, and expressing doubts about the distinctiveness of the trade mark UGH-BOOTS, the Hearing Officer took the view that the distinctiveness of the UGH-BOOTS trade mark must have arisen as a result of the addition of the hyphen in the mark, as this was the element within the mark that distinguished it from the generic descriptions. On this basis, he decided that Deckers’ use of the term UGH BOOTS in the relevant advertisement was simply use of a generic term, and that it was not use of the trade mark UGH-BOOTS “with additions or alterations not substantially affecting its identity”. He stated that “the absence of the hyphen from the trade mark is an alteration or addition which does affect the identity of the trade mark as registered”.
In light of his findings on that issue, and his view that there had not been any actual sales of products in Australia, the Hearing Officer ordered that the UGH-BOOTS registration be removed from the Register.
While this decision remains open to appeal, it serves as a warning to trade mark owners to take active steps to prevent the generic use of their trade marks, and to ensure that their registered marks are continually used in their registered forms in the Australian marketplace in order to avoid attack on the grounds of non-use.
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