Brand ownership is so important for businesses of any size. There is a common misconception that owning a business name means that you own that brand, but the reality is brand ownership in Australia is protected by trade marking of your brand, through either logo protection or words protection.
The other important basic element of brand ownership is that it is jurisdictional, meaning that trade marks are owned in each jurisdiction. Just because you own a trade mark in Australia does not guarantee that the same trade mark is available in the USA and vice versa. Protections are obtained for trade marks in each particular country that you wish to sell your goods and services.
You can own your brand in one country but not in another.
The recent USA “Ugg” case highlights some important lessons learned.
This case was recently heard in the USA where Australian Leather had sold a total of twelve pairs of ugg boots in the USA between 2014 and 2016, but without having any trade mark rights in the USA to the word or logo “UGG”. Deckers Outdoor Corporation a Delaware corporation (Deckers) alleged the sales of Australian Leather UGG boots in the USA breached the Deckers owned US trade mark for ugg boots, being the registered brand of Deckers. On Friday 10 May, a Chicago jury found these sales of ugg boots by Australian Leather in the USA meant that Australian Leather was guilty of wilful infringement of the Deckers owned UGG trade marks. Accordingly, Australian Leather was ordered to pay statutory damages of $450,00USD.
Lessons learned from this recent Chicago case are that before your business makes any sales (including as in this case online sales) of an Australian good in the United States, you need to ensure that any sales don’t infringe a trade mark ownership in the USA. This means at a minimum you should check the trade mark protections in existence in the US to ensure that your Australian brand does not infringe on trade mark ownership in the USA.
Secondly, if you plan to launch your brand in the USA it is wise to check whether your brand is available or already owned in the USA, particularly if you are looking at brand continuity within many countries such as Australia, New Zealand and the USA. Ensuring availability of brand ownership in all the countries you intend to operate is important. Strategic planning of your intellectual property is really important.
In Australia, let’s have a brief look at the trade marks each of these brands own and what each of these brands are able to do within Australia. To understand this, let’s briefly examine some of the formal protections that are in place within Australia between these two brands.
The UGG Australia logo is a logo trade marked and owned in Australia by Deckers. This was registered by Deckers from 12 February 1999 in Class 25: Footwear, including boots, shoes, and clogs. Click here to see the logo that Deckers owns and uses in Australia.
Among its trade mark portfolio, rival company Australian Leather owns a trade marked triangular shaped logo featuring the letters U and G in Australia. This is registered from 1 October 2009 in Class 25: Clothing, footwear, headgear. Click here to see just one of the logos that Australian Leather owns and uses in Australia.
In Australia, each of Deckers and Australian Leather have the right to sell and brand ugg boots using their trade marks that they own, within the same class (as noted above, being class 25 including footwear and in the case of Australian Leather, extending to clothing). Provided each of the brands is used in accordance with their trade mark ownership in Australia, each brand is selling footwear under a brand that they own and is not infringing brand ownership of the other party.
At Coutts Lawyers & Conveyancers, we regularly assist with legal advice on brand ownership, trademark applications, intellectual property licences and intellectual property management strategies and implementation.
For further information please don’t hesitate to Contact Coutts today.
This blog is merely general and non specific information on the subject matter and is not and should not be considered or relied on as legal advice. Coutts is not responsible for any cost, expense, loss or liability whatsoever in relation to this blog, including all or any reliance on this blog or use or application of this blog by you.
