Don’t let your Mark get Booted off the Register

This article first appeared in The Watermark Journal Vol 23 No 1 (March 2006) 

Further to our article “Trade mark rights lost through incorrect use” (October to December 2004 Watermark Journal*), a recent Australian case has again reiterated that unless a trade mark is used in its registered form, it may be vulnerable to removal from the Register for non-use.

The trade mark UGH-BOOTS is presently registered in Australia (registration number 245662) for boots, shoes and slippers in class 25. This trade mark has recently been the subject of an application for removal from the Register for non-use.

The trade mark has been registered since 25 January 1971 and is owned by Deckers Outdoor Corporation (“Deckers”) of the United States of America. Pacific Sheepskins Pty Ltd is a licensed user of the trade mark in Australia.

Grounds for Removal
Under section 92(4)(b) of the Australian Trade Marks Act 1995, a person aggrieved may apply for removal of a registered trade mark, if the trade mark has remained registered for a continuous period of three years (ending one month before the application is filed) and at no time during that period was the trade mark used by the registered owner in Australia, or, not used in good faith in Australia in relation to the goods or services to which the application for removal relates. Once an application for removal is received, the registered owner of the trade mark is given three month to oppose the removal application.

Application for RemovalThe applicants for removal, Bruce and Bronwyn McDougall (“the McDougalls”), sought to have trade mark no 245662 removed from the register as Deckers had not used the trade mark for the period 30 November 2000 to 20 November 2003.

Use of the Trade Mark by DeckersIn opposing the removal of the trade mark, Deckers did not present any evidence that the trade mark as registered had been used. However, Deckers did present evidence of use of UGG BOOTS in the form of an advertisment.

Deckers also lead evidence that the trade mark had been used in the relevant period as footwear branded with the UGG label was made available for sale via the internet website

The website offered footwear for sale to people in the United States, Canada and the United Kingdom. The website did not, however, offer the footwear for sale in Australia. Further, Deckers admitted that problems had been encountered in processing credit card payments received from Australia.

Deckers presented evidence and submissions that the advertisement was placed on behalf of a licensee of the trade mark in Australia. In considering the evidence, the Hearing Officer attempted to reconcile the internet advertising and Decker’s assertion that the trade mark was used in Australia during the relevant period. However, in conclusion, taking into account the difficulties of potential Australian customers receiving the goods, the Hearing Officer concluded that the website advertisement did not amount to a use in good faith of the trade mark. 

The Inherent Quality of UGH-BOOTS

In the opinion of the Hearing Officer, UGH-BOOTS “is exceptionally weak trade mark material from the viewpoint of its inherent capacity to distinguish the owner’s goods” based on the established test in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 where Kitto J stated:

“... the question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it”.

The McDougalls provided evidence including dictionary definitions, entries in the Yellow Pages, internet and magazine uses of the terms UGH BOOT, UG BOOT and UGG BOOT to demonstrate that the terms are used interchangably to describe a sheepskin boot. The interchangable use of these terms was suggested, and it was accepted by the Hearing Officer, that these terms are required by other traders (without any improper motive) to describe sheepskin boots.

The Hearing Officer concluded that the inherent capability of the trade mark UGH-BOOTS to distinguish one trader’s goods from another trader resides in the hyphenated nature of the words.

He therefore determined that the advertisement presented as evidence was not use of the trade mark as registered due to the omission of the hyphen and the altered spelling of UGH. He considered that these changes affected the identity of the trade mark as registered. Therefore, although terms including UGH BOOTS, UGG BOOTS and UGG AUSTRALIA had been used by Deckers, this did not amount to use of the trade mark UGH-BOOTS by Deckers.

When considering amending a trade mark used on labelling and promotional material it is important to consider if the amendment will affect the identity of the trade mark as registered. If so, the registered trade mark may be vulnerable to removal from the Register for non-use.
Where trade marks are inherently adapted to distinguish to only a small extent, any alteration of the trade mark is likely to affect the identity of the trade mark. In these situations, use of the altered mark is unlikely to be use of the trade mark as registered.

*Past copies of Watermark’s Journal can be found on our web site

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