I'm sure everyone will remember that protracted legal battle over who had rights over the term Ug, Ugg or Ugh boots, in which little Aussie battlers were able to convince the Registrar of Trade Marks that these terms in themselves were generic and therefore beyond trademark in Australia by U.S. Deckers Outdoor Corporation (with the exception of one particular graphic representation of a certain trademark incorporating the word UGG).In the initial Registrar of Trade Marks decision in 2006 it was stated:
34. The evidence overwhelming supports the proposition that the terms UGH BOOT(S), UG BOOT(S) and UGG BOOT(S) are interchangeably used to describe a specific style of sheepskin boot and are the first and most natural way in which to describe these goods which should innocently come to the minds of people making this particular style of sheepskin boot. The terms thus lack any inherent capacity to distinguish the particular goods. The Yellow Pages®, Internet, magazine and dictionary uses of these terms make it quite clear that these terms are generic – they are the most immediate and natural ways in which to refer to a particular style of sheepskin boot.4 They are terms which are required by other traders without any improper motive to describe those boots. The terms, (as opposed to the registered trade mark), are in all senses analogous to the terms SCHOOLIES - Sports Break Travel Pty Ltd v P & O Holidays Ltd, (2000) 50 IPR 51 or CAPS THE GAME - Powell v Glow Zone Products Pty Ltd (1997) 39 IPR 506.
IP Australia now has this fact sheet on its website explaining the current situation as it interprets it, with this particular rider:
The Internet provides easy access to global markets and takes no account of national borders. If you are trading on the Internet you need to understand the laws of the country into which you are selling goods or services. If you place an offer for sale on the Internet in Australia that invites purchase from overseas, this can amount to trading overseas and could leave you vulnerable to legal action and expensive litigation. Likewise an overseas proprietor selling goods in Australia via the Internet may infringe an Australian trade mark.
Decker Outdoor Corporation was such a bad sport about its Australian loss that it apparently attempted to scare away Internet trade from the small Australian company, which led opposition to its attempt to expand the Decker trademark, by creating www.uggsnrugs.com (it's winter here in Australia, so if you have a little cash to spare why don't you click onto the real Aussie site www.uggs-n-rugs.com.au owned by West Australians Bruce and Bronwyn McDougall and order a pair of Ugg boots to keep those feet warm).
IP Australia now has this fact sheet on its website explaining the current situation as it interprets it, with this particular rider:
The Internet provides easy access to global markets and takes no account of national borders. If you are trading on the Internet you need to understand the laws of the country into which you are selling goods or services. If you place an offer for sale on the Internet in Australia that invites purchase from overseas, this can amount to trading overseas and could leave you vulnerable to legal action and expensive litigation. Likewise an overseas proprietor selling goods in Australia via the Internet may infringe an Australian trade mark.
Decker Outdoor Corporation was such a bad sport about its Australian loss that it apparently attempted to scare away Internet trade from the small Australian company, which led opposition to its attempt to expand the Decker trademark, by creating www.uggsnrugs.com (it's winter here in Australia, so if you have a little cash to spare why don't you click onto the real Aussie site www.uggs-n-rugs.com.au owned by West Australians Bruce and Bronwyn McDougall and order a pair of Ugg boots to keep those feet warm).
The company also took out additional overseas trademarks using the word UGG, of which some are included in a rolling list of 33 marks in the United States alone.
It seems that in July 2009 the ever-litigious Deckers now has Google Inc in its sights and its legal team is demanding that the Internet search engine cease index listing over thirty websites displaying and selling ugg boots.
Thankfully, it appears that Google is not rushing to obey the dictates of this international marketplace bully as the named websites and goods images were still visible at the time of writing this post.
It seems that in July 2009 the ever-litigious Deckers now has Google Inc in its sights and its legal team is demanding that the Internet search engine cease index listing over thirty websites displaying and selling ugg boots.
Thankfully, it appears that Google is not rushing to obey the dictates of this international marketplace bully as the named websites and goods images were still visible at the time of writing this post.
Graphic from Google Images
No comments:
Post a Comment