Deckers Outdoor Corporation v Luda Production Pty Ltd

This matter came before Hearing Officer Alison Windsor concerning an opposition by Deckers Outdoor Corporation to three trade mark applications by Luda Production Pty Ltd. The dispute centred on the use and registration of trade marks featuring the words "UGG AUSTRALIA" in relation to sheepskin footwear. Deckers, as the opponent, sought to prevent Luda Production from registering its marks, alleging prior use and potential confusion in the marketplace.

The primary legal issues before the Hearing Officer were whether Deckers had established grounds for opposing Luda Production's trade mark applications. Specifically, the Hearing Officer had to consider the evidence presented by both parties regarding the history of use of the "UGG AUSTRALIA" trade mark, the distinctiveness of the mark, and whether Luda Production's proposed registrations would be likely to deceive or cause confusion among consumers, given Deckers' asserted prior and extensive use of similar marks.

The Hearing Officer considered evidence from both parties, including declarations from Brian Smith (representing Deckers' predecessor in title) detailing the development and sale of "UGG" branded sheepskin footwear in the United States since the late 1970s, and registrations of "Ugg Australia" trade marks in the US from 1987. Luda Production's evidence, through Lena Fishman, outlined the establishment of their business in Australia around 1981, manufacturing and selling sheepskin products under the "Luda Textiles Co" name and later as Luda Production Pty Ltd. The Hearing Officer found that the opponent, Deckers, had not established any of the grounds of opposition relied upon.

Consequently, the Hearing Officer ordered that the three trade mark applications by Luda Production Pty Ltd could proceed to registration after one month from the date of the decision, unless an appeal was filed. Costs were ordered against the opponent, Deckers Outdoor Corporation, according to the official scale.