Fight over Uggs name angers Australians

Australian Leather with its footwear in Lidcombe, Australia.
Australian Leather with its footwear in Lidcombe, Australia.PHOTO: NYTIMES

A California-based firm is suing an Australian shoemaker for naming its footwear Uggs, but Australians say it is a generic term in the country

LIDCOMBE (Australia) • Three decades before talk-show host Oprah Winfrey ignited a fashion firestorm by promoting the fleecy footwear known as Uggs, a surfer named Corky Carroll packed a pair of something very similar for what would turn out to be a fateful journey.

Carroll, a famous surfer in the 1960s and 1970s, discovered the boots while hitting the waves in Australia, where locals used them to keep their feet warm on cold days at the beach.

He brought a pair back with him to California, he said, then asked a friend to send him 100 to sell on consignment after other surfers began admiring them.

"I have always loved them, very comfortable and warm," Carroll, who still owns a pair, said in an e-mail from his home in Mexico. "Also easy to get on and off."

His account is now part of a court dispute that is raising hackles in Australia over footwear that has sometimes been derided as unflattering and just plain ugly.

Though Australian by pedigree, the Uggs brand name in the United States is owned by a company based in California - and that firm is suing an Australian shoemaker for using it.

Australians - up to and including Prime Minister Malcolm Turnbull - say Uggs should simply be uggs. In a letter dated in July, he said he had asked the Australian Embassy in Washington to get information from the US government about the dispute and to "reiterate Australia's view that 'ugg' is a generic term".

The argument may be tough to make in the US, legal experts say.

While uggs may be generic in Australia, Uggs are not in the US.

"Trademark law tends to be very parochial when it comes to this sort of thing," professor of intellectual property law Barton Beebe at New York University said in an e-mail.

"It only cares about the perception of the relevant consumer population, and in the US, the relevant population was not likely and probably still isn't likely influenced by Australian English."

Uggs - the generic kind - might seem like an odd place for Australia to plant its cultural flag. But it comes as some in Australia fume about people outside the country appropriating Australian names and ideas.

Winfrey, model Kate Moss and actress Sarah Jessica Parker may have helped make the footwear famous around the world, but many Australians want to call Uggs their own.

"If the French can protect 'Champagne', the Portuguese 'Port', the Spanish 'Sherry' and the Greeks 'Feta'," Australian senator Nick Xenophon said in a recent statement, alluding to the brand protections that some famous names enjoy, "then surely Australia can protect the word 'Ugg.'"

(He said last Friday he would resign as a senator.)

Uggs came and went from public view in the US since they were trademarked there, but they won a big boost from Winfrey, who came out as a fan in the early 2000s.

Their roots are more humble.

According to Australian trademark officials, they appeared as early as the 1970s in phone directory advertisements as ug, ugg, ugh boots, among many other variations.

"In Australian slang, 'ughs' are sheepskin booties, designed by surfers in the 1960s to coddle feet weary after 'shooting the curl'," The New York Times said in 1994.

The brand's US owner, the Deckers Outdoor Corp, argues that in the 1990s, it bought the US-registered name from an Australian entrepreneur, Brian Smith, fair and square. Australians violate the company's intellectual property rights, it said, when they sell Ugg-like footwear in the US.

Last year, it sued an Australian shoemaker owned by Mr Eddie Oygur in a Chicago federal court, saying he sold ersatz Uggs in the US. He sold about US$2,000 (S$2,740) worth of ugg boots in the US over a five-year period, his lawyer said, and believed he had every right to.

"I want to let the American people know what corporate bullies they are and what they're trying to do - deplete my resources, ruin my business and the whole ugg boot industry," he said in his factory in Lidcombe, a Sydney suburb.

Mr Oygur, 56, plans to take his argument to the court of American public opinion. On Sunday, he said, he plans to join Mr Xenophon to drive a herd of sheep to Deckers' headquarters in Goleta, California.

Uggs is not the only Australian name to spur protective feelings - and, potentially, limit the international expansion of Australian companies.

Bondi Wash, a Sydney company that makes natural baby lotions, soaps and dog rinses, groused that it was denied a US trademark because of a similar name held by Abercrombie & Fitch. Bondi, a long crescent of white sand in Sydney, is one of Australia's most famous beaches.

"They didn't really care that Bondi was actually quite a well-known place in Australia and they'd awarded it to a big US company," said Ms Belinda Everingham, founder of Bondi Wash, referring to the US Patent and Trademark Office.

"Certain words really belong in the public domain," said intellectual property and innovation professor Matthew Rimmer at Queensland University of Technology's law school.

"There's a certain Australian pride in the ugg boot and a belief that it is a common article of clothing in Australia and resentment over it being claimed by a United States trademark holder."

Mr Oygur's company, Australian Leather, hopes to undercut Deckers' argument by saying Uggs were once uggs in the US too before they were improperly registered as a trademark.

To bolster its argument, it tapped Carroll and another famous surfer, John Arnold, who said he exported large volumes of ugg boots to the US beginning in the late 1960s.

"My opinion is that the term 'Ugg boot' is not something that should be owned as it is a description," said Carroll, who said he believed the name first came from Australian surfers who thought they were ugly.

"A boot that was ugly," he said. "That is different from a brand name."

NYTIMES

A version of this article appeared in the print edition of The Straits Times on October 09, 2017, with the headline 'Fight over Uggs name angers Australians'. Print Edition | Subscribe