Deckers Outdoor Corporation v B&B McDougal

Deckers Outdoor Corporation (the applicant) sought the removal of trade mark registration number 245662, for the mark "UGH BOOTS", from the Register of Trade Marks on the grounds of non-use. B&B McDougal (the opponent) opposed this removal. The matter was heard by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the opponent had demonstrated genuine and commercial use of the trade mark "UGH BOOTS" in Australia during the relevant period of 30 November 2000 to 30 November 2003. Specifically, the delegate had to consider whether a newspaper advertisement and potential sales via the opponent's website constituted sufficient use to prevent the removal of the registration.

The delegate found that a newspaper advertisement placed by the opponent in *The Sydney Morning Herald* did not demonstrate use of the trade mark in good faith. While the advertisement might have been intended to gauge interest or test the Australian market, the delegate noted significant doubts regarding the actual receipt of goods by Australian customers who ordered via the website. Evidence suggested that the website only permitted orders from the USA, Canada, and the United Kingdom, and the opponent's leading declarant attested to difficulties processing Australian credit card orders. Consequently, the delegate concluded that the use, if any, was not a genuine and commercial use of the trade mark.

Accordingly, the delegate ordered that trade mark registration number 245662 be removed from the Register of Trade Marks and ordered costs against the opponent.