Deckers Outdoor Corporation v Luda Productions Pty Ltd

In the Federal Court of Australia, Justice Alison Windsor considered a dispute between Deckers Outdoor Corporation, the owner of the registered trade mark "UGG Australia", and Luda Productions Pty Ltd, a company that had been using the term "UGG" in relation to footwear. Deckers alleged that Luda's use of "UGG" constituted trade mark infringement and misleading or deceptive conduct under the *Australian Consumer Law*. Luda, in turn, sought to have Deckers' trade mark invalidated on the grounds that "UGG" was a generic term for sheepskin boots.

The primary legal issues before the Court were whether the term "UGG" had become a generic descriptor for sheepskin footwear in Australia, thereby rendering Deckers' trade mark invalid, and if not, whether Luda's use of the term infringed Deckers' registered trade mark and amounted to misleading or deceptive conduct. The Court was required to assess the evidence presented by both parties regarding the common usage and understanding of the term "UGG" within the Australian market.

Justice Windsor found that while the term "UGG" was widely used in Australia to describe sheepskin boots, this usage did not necessarily equate to genericness in a way that would invalidate the trade mark. The Court considered the historical context of the term and the evidence of its use in advertising and by consumers. Ultimately, the Court concluded that Deckers had established its trade mark rights and that Luda's use of "UGG" was likely to cause confusion and deceive consumers into believing that its products were associated with Deckers.

The Court ordered that Luda Productions Pty Ltd be permanently restrained from using the term "UGG" in relation to footwear and awarded damages to Deckers Outdoor Corporation.