17 Sep

When Trade Marks Get Ugg-ly: 'What Happens if a Generic Term is Trade Marked in Another Country?' Christopher Parker, LegalVision

Trade mark rights exist on a country-by-country basis, meaning that trade mark registration in Australia does not automatically mean you will be able to obtain registration in another country. If you intend to trade under your particular brand overseas, you also need to consider obtaining international trade mark protection. Recently, a case involving ugg boots perfectly illustrates the potential risks businesses face when obtaining international trade marks. There are two main concerns that you should be aware of when obtaining trade mark protection overseas.

  1. has somebody already registered the trade mark?
  2. is the trade mark too descriptive (and therefore non-registrable) in that particular country?

This article will explain the ugg boots case, and the lessons you can learn about international trade mark registration from the case.

Summary of the UGGS US Case

Eddie Oygur is a producer of ugg boots in Western Sydney. In March 2019, Deckers Outdoor Corporate (Deckers), a US company that makes various types of footwear, sued him for trade mark infringement. Deckers is the registered US trade mark owner for the term “UGG”, which they relied upon to bring the action against Mr Oygur. Mr Oygur has sold his products in the US market under the name UGG.

Mr Oygur tried to argue that the term UGG is a generic term in Australia. This essentially means that the term is in such common descriptive use in Australia that no single trader owns a monopoly in the term. Therefore, numerous traders should be able to use it freely. However, the court agreed with Deckers because, while the term may be considered generic in Australia, the same is not true in the US. Mr Oygur is looking to appeal this decision at the time of writing this article.

What Can We Learn From This Case?

Trade Mark Protection is Country-by-Country

If your business trades internationally, which is becoming more and more common in today’s online landscape, then you are using your trade marks (i.e. business name, logo, etc.) overseas. If you do not have a registered trade mark in a particular country, but a third party does, you may be vulnerable to infringement.

This is true even if you have a registered trade mark in Australia. This is because trade mark protection operates on a country-by-country basis.

Descriptiveness is Not The Same in Every Country

A term that is generic or descriptive in one country may not be in another. In some cases, even if your trade mark has visual elements (i.e. in a logo), a foreign trade mark office may object to your application on this basis.

This is something you should consider if you are planning on expanding your business overseas. You do not want to find yourself in a situation where you are blocked in another country and have to resort to rebranding. 

E-Commerce May Put You at Risk

In most cases, if trading solely in Australia, you will not need to consider whether a term is considered descriptive or generic in another country. However, as many businesses turn to online platforms to sell their goods, this issue may continue to occur.

If you are selling your product under a name that you consider to be generic, but the term is registered as a trade mark in a country that you sell to, you may be infringing the owner’s rights of this overseas registered trade mark. 

Not keeping up to date with the current state of intellectual property law can put you at risk. Below, we will outline some ways you can protect yourself from unknowingly infringing a registered trade mark.

What Can You Do Now?

Register Your Trade Mark

The best defence against an infringement action is a registered trade mark. At the very least, the onus will be on the other side to demonstrate that their claim is stronger than yours (i.e. if they have been operating longer and have a stronger reputation or association with that mark). 

Even if you have been using the mark without registration to date without issue, formally registering the trade mark will provide you with more secure protection. In the event someone alleges infringement, you can simply rely on the registration as a defence.

If you want international trade mark protection, there are two ways of obtaining it. You can file directly through the office of a foreign country, or you can file a Madrid Protocol application. The latter approach allows you to file an application based on an existing domestic (i.e. Australian) trade mark and designate other countries linked to one ‘parent’ Madrid Protocol application. This method is often much more cost-effective and easier to manage.

Conduct Searches

Conducting searches on the trade marks database in Australia and overseas is a great way to determine if a trade mark is available or if a term you consider generic is free for you to use. You will need to select the particular class of goods and services to cover in the results when you search. If a conflicting mark does not come up, your mark may be available for your use and potentially registration. However, there is also a chance that the mark may be too descriptive for you to register.

You can extend your searches to online marketplaces, selecting the particular country for the search results to determine if your mark is in common use by traders in your particular industry.

Key Takeaways

Before choosing a business name or logo for your business, consider the following;

  • is the mark already taken, or is it considered descriptive by the general public?;
  • if you are selling your goods or services overseas, remember that trade marks operate on a country by country basis, and you may need to file overseas; and
  • the internet is your friend, and you should try to leverage it to check for any businesses using a mark that may be considered similar or identical to yours. 

If you have further questions about who owns IP that you create, LegalVision’s experienced intellectual property lawyers can help. Get in touch with them on 1300 544 755 or fill out the form on this page.

Posted in General by Anonymous

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