THE recent win by the proprietors of local business ‘uggs-n-rugs’ in a legal battle with US company Deckers is a happy ending for Australian producers, and received wide ranging media attention. A January ruling by the Trade Marks Office struck off Deckers trademark over the words ‘ugh-boots’ because the company had not adequately used its trademark in Australia, effectively opening the door for almost 100 other Australian producers of the sheepskin boot to use the words to represent their product. And although the story ended well, the decision for sheepskin producr producers Bruce and Bronwyn McDougall (aged 62 and 61) to self-fund a two-year legal battle with Deckers, whose profits last year were $116.2 million, was a huge risk. Ms McDougall acknowledged the legal battle was a major challenge, but after having all but lost the American Internet market due to Deckers’ trademark in America, and with Deckers pushing to enforce its trademark in Australia, the couple felt there was little choice. “We have received a number of letters from Deckers over the years. Originally they said we couldn’t use the term ugh boots on our website for the US, so we changed it, but then they said we can’t use the term in Australia and that really got our backs up because we believe the term is generic, and at the time we had been making the boots for 25 years,” Ms McDougall said. “Deckers tried to remove the trademark over our business name ‘uggs-n-rugs’, and we got really annoyed then and applied to have their original trade mark removed – we couldn’t just ignore them, we needed to use the word to trade on the Internet, no-one is going to search for ‘sheepskin boots’, they look for ugh boots.” The McDougalls spent $40,000 of their own money over a two-year period fighting Deckers, and have been advised that less than $1,000 of that is recoverable. “There are no guarantees when you start fighting things like this; even going into the hearing in November we didn’t feel 100 per cent confident,” Ms McDougall said. “So many times you read things about decisions that are opposite of what you think is common sense, and don’t seem to have any justice, but this was justice. “If we hadn’t succeeded we would have had to change our business name and not called the boots ugh boots, and that probably would have been the end. “When you get involved in these things you get so uptight and dig your heels in thinking ‘why should they get away with this?’ – you just get sucked in to it and don’t let go.” The good news is that, since winning the case, local business has picked up considerably. “The local market has been wonderful, but the US market has all but dropped off,” Ms McDougall said. “They aren’t as popular over there as they were two years ago when all the models and actresses were wearing them.” Because Deckers owns ugh-related trademarks in the US, the McDougalls can’t use the word on a website with a .com suffix, but now can use is on their website with a .com.au suffix. “We can’t alter the international trade mark, it is too expensive,” Ms McDougall said. She added that the couple had a plan to get around this impediment, but wouldn’t disclose details, saying lawyers still had to approve it. Despite the legal victory the McDougalls say they have no plans to further expand their business. “We are getting old, I suppose someone else could expand the business, but not us,” Ms McDougall said.
