NewsBite

UGG Since 1974 brand hit with bitter trademark lawsuit by US giant Deckers

The original maker of iconic Australian sheepskin boots UGG Since 1974 is being sued by US retail giant, forcing it to change its name amid a bitter lawsuit.

Ugg Since 1974 will be known just as Since 1974 outside of Australia and New Zealand, the comp[any said. Image supplied.
Ugg Since 1974 will be known just as Since 1974 outside of Australia and New Zealand, the comp[any said. Image supplied.

The original maker of iconic Australian sheepskin boots, UGG Since 1974, is being sued by a massive US company and being forced to change its name amid a bitter lawsuit.

In a viral TikTok shared by Todd Watts, the grandson of UGG Since 1974 creators Arthur and Faye Springthorpe, it was revealed American giant Decker Outdoor Corporation has launched court action against the family-owned business.

@uggsince1974

We’re being sued by Deckers Outdoor Corporation - you know them as UGG with the big G in the middle. Watch the whole video for the details. We can’t thank you enough for welcoming our SINCE 74 mark with open arms. SINCE 74 is an ode to our heritage, handcrafting the world’s most bespoke Australian made sheepskin boots for 50 years. More information to follow. Stay tuned and be sure to sign up to our mailing list for our major updates. #uggsince1974

♬ original sound - UGG Since 1974

“Here’s the situation. We have proudly been making Australian boots for over five decades and three generations,” he said.

“We also own the trademark here in Australia and New Zealand … where Ugg boots originated. But the Deckers lawsuit has made it hard to share our story with everyone else within the world.

“It’s extremely hard to fight a lawsuit against a multi-billion dollar company, especially as a family owned Australian made business.”

The dispute appears to be about a trademark over the word “Ugg”, and court documents reveal the US company complained to tech giants Meta and TikTok about the dispute who “decided to restrict” the Australian company’s accounts in Australia. While the Ugg Since 1974 account appears on TikTok, it does not on Meta owned Instagram.

Deckers has been contacted for comment.

Todd and Hannah Watts at the Miami factory on the Gold Coast. Picture: Jerad Williams
Todd and Hannah Watts at the Miami factory on the Gold Coast. Picture: Jerad Williams

The dispute appears to be about a trademark over the word “Ugg”.

In court filings lodged in Illinois, obtained by The Australian, Deckers claimed the company behind UGG Since 1974 – Wolverine Group PTY LTD – damaged the reputation of their brand name.

“Deckers has been and continues to be irreparably damaged through consumer confusion, dilution, and tarnishment of its valuable trademarks and patented designs as a result of Defendant’s actions and seeks injunctive and monetary relief,” the court filings said.

Deckers Outdoor Corporation is a US listed company with a market capitalisation of $31bn.

The key difference between the American and Australian brands, is that the US company symbol features a large second g in imagery of the word “Ugg”.

According to the Deckers’ website, that brand was founded in 1978 by “an Australian surfer on the coast of California”.

Mr Watts — co-owns and runs the business with his wife Hannah — said due to the lawsuit, the company has been forced to change the name of their brand to “SINCE 74” outside of Australia and New Zealand.

“In Australia and New Zealand we will always and forever be UGG Since 1974. But for those boots leaving our borders and heading over to you guys overseas we will transition our brand to SINCE 74.

Todd Springthorpe from UGG Since 1974. Picture: TikTok
Todd Springthorpe from UGG Since 1974. Picture: TikTok
UGG Since 1974 has been forced to rebrand outside of Australia. Picture: Instagram
UGG Since 1974 has been forced to rebrand outside of Australia. Picture: Instagram

“This doesn’t change who we are, (or) what we believe in. Our roots are still the same. Our quality is still the same. The product is still the same.

“More importantly, our story is still the same.

“We are the original and we will still be the original no matter what our label on the back of our boots says.”

Deckers Outdoor Corporation acquired the American brand UGG in 1995 for $14.6m, according to reports, after it was first founded in 1978.

Both brands sell similar products, but Australians have colloquially referred to the slipper style of boot — usually with sheep wool and a tough sole — as the name of their slippers.

Deckers’s court filings say the company owns and markets its footwear products, including “under several distinctive trademarked brands, including its famous UGG® brand.”

“UGG footwear has been and remains highly coveted today by consumers as one of the most popular and recognizable symbols of luxury and style,” the court filings say.

“Since UGG boots were featured on Oprah’s Favorite Things® in 2000, the popularity of UGG footwear has grown exponentially, with celebrities such as Gigi Hadid, Rihanna, Hailey Bieber, Kendall Jenner, Emily Ratajowski,and Megan Fox among a myriad of others regularly seen wearing UGG footwear.”

The US company reported it made about $2bn in global sales off customers buying UGG branded boots last year.

A range of designs by the original inventor Jennifer MacIntyre were lawfully patented from 2009, Deckers said.

Deckers accused the Australian brand of selling products “that are studied imitations, infringements, and/or counterfeits of Deckers’ UGG Trademarks” in the US.

The US company claimed a Deckers “investigator” purchased a pair of the Australian boots and “it was determined that the purchased Infringing Products bore counterfeit UGG Trademarks”.

Angelica Snowden

Angelica Snowden is a reporter at The Australian's Melbourne bureau covering crime, state politics and breaking news. She has worked at the Herald Sun, ABC and at Monash University's Mojo.

Add your comment to this story

To join the conversation, please Don't have an account? Register

Join the conversation, you are commenting as Logout

Original URL: https://www.theaustralian.com.au/business/ugg-since-1974-brand-hit-with-bitter-trademark-lawsuit-by-us-giant-deckers/news-story/bbe76a46301eeb85b7e4434f7526b0fa