Australian Leather ordered to pay Deckers $450,000 in TM dispute
An Australian shoe company has been ordered to pay $450,000 to Deckers, the maker of the UGG boot.
On Friday, May 10, a jury for the US District Court for the Northern District of Illinois found 12 pairs of sheepskin-lined boots sold by Australian Leather infringed US-based Decker’s ‘UGG’ trademarks.
According to Reuters, a jury found Australia Leather had wilfully infringed Decker’s trademarks by using the name ‘UGG’ on the shoes.
It was also reported that Australian Leather may be liable to pay “millions” more in legal costs, following the three-year lawsuit.
Deckers first filed an action against Australian Leather in 2016, asking the US court to limit the sales of Australian Leather’s boots to Australia and New Zealand so as to not cause consumer confusion in the US.
At the time, Australian Leather argued “ugg” is a generic term origination in Australia from the 1960s surfing community, but this argument was rejected by the court.
Additionally, Deckers also alleged Australian Leather had infringed four of its design patents.
The verdict on whether Australian Leather infringed the design patents will be decided in a separate non-jury trial.
This is not the first time Deckers has taken legal action to protect its UGG trademark. As reported by WIPR, in December 2018, Deckers took action against alleged online counterfeiters in China for selling fake UGG boots.
It said the counterfeiters ran online stores designed to appear as authorised sellers of the footwear brand. In its complaint, Deckers sought an injunction against the companies and $2 million for each use of the UGG trademark.
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