There isn’t a singular, unified “international trademark system” in the sense of a global organization that governs trademarks worldwide. There are, however, international frameworks and treaties that facilitate trademark protection enforcement across multiple jurisdictions. There is the Paris Convention for the Protection of Industrial Property, the Madrid System, and various regional trademark systems such as the European Union Intellectual Property Office (EUIPO). Businesses that wish to participate in international commerce should learn how to navigate these systems or go it alone by filing a national trademark application in each relevant country. Sometimes, businesses run into trouble.
We wrote about this in connection with a group of Swiss and French cheesemakers who attempted to register GRUYERE in the United States as a geographical indication for cheese made in the Gruyere region of Switzerland. The USPTO and the U.S. courts rejected the cheesemakers’ attempts at registering GRUYERE on grounds that in the United States, Gruyere was a generic term for a specific type of cheese. Generic terms, of course, do not qualify as trademarks.
A similar dispute involving products that were generic in one place but not another has caused foreign footwear companies to reconsider their marketing plans. Perhaps you are familiar with the Australian sheepskin boot known widely as the “ugg.” Over the years, they have been very popular in the U.S. In Australia, where the ugg originated, ugg is a generic term for a functional piece of footwear. Initially produced by small-scale Australian manufacturers, these boots became an Australian cultural staple, reflecting a casual, functional approach to footwear.
Not so in the United States. Here, the term “ugg” assumed a proprietary status when Deckers Outdoor Corporation (“Deckers”), a U.S. company, acquired the trademark for UGG in the 1990’s. Deckers transformed the humble boot into a luxury product, building a globally recognized brand and securing intellectual property rights in numerous jurisdictions. You might consider this a smart — or at least profitable — example of cultural appropriation. In the financial year 2023, the UGG brand generated net sales of approximately 1.9 billion U.S. dollars.
Australian footwear manufacturers of uggs did not agree with Decker’s (mis)appropriation of their national footwear and attempted to sell shoes and boots in the United States under the “Ugg” name. Deckers actively opposed them. In a 2018 lawsuit, Deckers sued Australian Leather Pty. Ltd in the United States District Court for the Northern District of Illinois. That court held that UGG, while it may be generic in Australia, is not a generic trademark in the United States. Importantly, Deckers commissioned various surveys from 2004 until 2017 asking respondents whether they understood UGG to be a brand name. In 2011, 89% of the respondents did. The court wrote:
Australian Leather has not shown that ugg is, or ever has been, generic among footwear customers in the U.S—the relevant public. Australian Leather argues that the word ugg was generic among American surfers in the 1970s, but there is no reason to construe the relevant public so narrowly. Sheepskin boots are not a specialized technology that appeals only to some limited consumer base.
A jury eventually ordered Australian Leather to pay Deckers $450,000 for selling online even though Australian Leather claims it sold only 12 pairs of boots in the U.S. between 2014 and 2016. Ouch!! In 2021, the United States Court of Appeals for the Federal Circuit affirmed the District Court judgment.
In Australia, you have the opposite result. In 2006, Perth-based company Uggs-N-Rugs successfully challenged the registration of “ugg,” “ug,” and “ugh” as trademarks in Australia. IP Australia ruled that these terms were generic and could not be exclusively owned, allowing Australian manufacturers to continue using them to describe sheepskin boots.
Back in the United States, the Australian family-owned company “UGG Since 1974” faced legal action from Deckers for using the term UGG. The complaint asserted that
24. Deckers’ investigator visited Defendant’s Website and purchased Infringing Products.
25. The purchased Infringing Products were offered for sale to and shipped to United States consumers, including to the State of Illinois.
26. The purchased Infringing Products were inspected and it was determined that the purchased Infringing Products bore counterfeit UGG Trademarks.
27. A comparison of the UGG Trademarks to Defendant’s Infringing Products offered for sale on Defendant’s Website and received by Deckers’ investigator exemplifies Defendant’s counterfeiting and infringement of the UGG Trademarks.
Knowing they were outmatched, UGG Since 1974 announced a rebranding to “SINCE 74” for markets outside of Australia and New Zealand.
The lesson learned is that companies selling internationally must understand the status of their brand in other countries as well as the cross-cultural meaning. What may be a brand in one country, may be a generic or even a pejorative term in another. The Australian Leather case is a stark reminder of how costly such mistakes can be. One country’s generic brand can be another country’s protected intellectual property. So, beware and if you don’t understand a country’s trademark regime, find a professional intellectual property attorney who does.
— Adam G. Garson, Esq.
*Originally posted on my PA Trademark Lawyer website.