Opposition by Deckers Outdoor Corporation to registration of trade mark application number 2024552 (class 25) – UGG MADE IN AUSTRALIA COMFORT ME – in the name of GHN Trading Pty Ltd

This matter concerned an opposition by Deckers Outdoor Corporation (the Opponent) to the registration of trade mark application number 2024552, "UGG MADE IN AUSTRALIA COMFORT ME," in class 25, filed by GHN Trading Pty Ltd (the Applicant). The decision was made by Nicholas Barbey, Hearing Officer and Delegate of the Registrar of Trade Marks.

The legal issues before the Hearing Officer included whether the Applicant's trade mark should be refused registration under various provisions of the *Trade Marks Act 1995* (Cth) and the *Trade Mark Regulations 1995* (Cth), specifically focusing on regulation 4.15A. The Opponent relied on its ownership of registered trade marks, including a protected international trade mark known as the "Logo Mark," which incorporated the word "UGG." The Applicant contended that its mark was not deceptively similar to the Opponent's marks, that "UGG" was descriptive, and that its products were Australian made, unlike the Opponent's.

The Hearing Officer determined that the Opponent had established the ground of opposition under regulation 4.15A. This regulation requires rejection of an application if the applicant's trade mark is substantially identical with or deceptively similar to a protected international trade mark held by another person in respect of similar goods, and the priority date of the applicant's mark is not earlier than that of the other trade mark. Applying this to the comparison between the Applicant's mark and the Opponent's Logo Mark, the Hearing Officer found that the regulation's criteria were met. The standard of proof was the ordinary civil standard on the balance of probabilities, and the relevant date for determining rights was 1 August 2019.

Consequently, the Hearing Officer refused to register trade mark application number 2024552 in respect of all the goods. The Hearing Officer also awarded costs against the Applicant in favour of the Opponent, in accordance with section 221 of the Act and the relevant regulations.