The suit, filed in federal court for the Central District of California in Los Angeles, alleged that Emu has intentionally misled consumers into believing they are buying a genuine Ugg product by referring to its own boots as “ugg boots” on its U.S. website.
“The success of Ugg Australia has created an entire industry of companies that market their wares by deliberately confusing consumers,” said Deckers Chairman and CEO Angel Martinez. “Deckers is taking an active stand against those companies that infringe on our trademarks, like Emu, and companies that copy our designs, like Bearpaw, as well as countless websites selling counterfeit product, because our success is built on the trust between Ugg Australia and its retail customers and consumers. That bond is our most important asset.”
At issue is the word “ugg,” a generic word in Australia, according to Emu, which noted that more than 70 registered trademarks in Australia and New Zealand use the term.
But Deckers has grappled over the word before.
The Goleta, Calif.-based company, which merged with its Australian subsidiary Ugg Holdings in 2004, inherited a lawsuit that year versus footwear firm Koolaburra over the Ugg mark. The court said the Ugg mark was “extremely strong,” and ruled in favor of Deckers. Since the judgment, Deckers has “spent millions in advertising and promoting its Ugg mark,” according to company.
Emu Australia spokesman Dave Porter defended his company’s use, stating, “The fact that Ugg Australia has filed a lawsuit against a company for misleading consumers makes us laugh down here in Australia. What does the word ‘Australia’ convey to consumers as part of the Ugg Australia trademark? Customers do care about trust and true brand heritage. … They are also smart. Eventually the truth about these brands that try to leverage off Australia will become widely known. … They are not in fact genuinely Australian.”
Deckers said it wants Emu to stop “copying, reproducing or imitating” Deckers’ marks, which includes the use of “Ugg” or “ugg” in any manner. It is asking for the recall of all products sold in the U.S. through its website “by virtue of using the word ‘ugg,’” and the destruction of any infringing products, court papers said.
The plaintiff seeks treble damages and any gains, profits and advantages derived by Emu in this matter, as well as costs and attorney fees.