When brands get ugly: what if a generic term is branded in another country? – Intellectual property
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Trademark rights exist country by country, which means that registering a trademark in Australia does not automatically mean that you will be able to obtain registration in another country. If you intend to trade under your particular brand abroad, you should also consider obtaining international trademark protection. Recently, a case involving ugg boots is a perfect illustration of the potential risks companies face when obtaining international trademarks. There are two main concerns you should be aware of when obtaining trademark protection overseas.
- Has anyone already registered the mark?
- is the mark too descriptive (and therefore not registrable) in that particular country?
This article will explain the ugg boots case and the lessons you can learn from international trademark registration from the case.
Summary of the UGGs US case
Eddie Oygur is a producer of UGG boots in West Sydney. In March 2019, Deckers Outdoor Corporate (Deckers), an American company that manufactures various types of footwear, sued him for trademark infringement. Deckers is the proprietor of the US registered trademark for the term “UGG”, on which they relied in bringing the action against Mr. Oygur. Mr. Oygur sold his products in the US market under the name UGG.
Mr. Oygur attempted to argue that the term UGG is a generic term in Australia. Essentially, this means that the term is in such widespread descriptive use in Australia that no trader has a monopoly on the term. Therefore, many traders should be able to use it freely. However, the court agreed with Deckers because, while the term may be considered generic in Australia, it is not the same in the United States. Mr. Oygur is seeking to appeal this decision at the time of writing.
What can we learn from this case?
Trademark protection is country by country
If your business is trading internationally, which is becoming more and more common in today’s online landscape, then you are using your brands (i.e. trade name, logo, etc.) to l ‘foreigner. If you don’t have a registered trademark in a particular country, but a third party does, you might be vulnerable to infringement.
This is true even if you have a registered trademark in Australia. Indeed, trademark protection operates country by country.
The description is not the same in all countries
A generic or descriptive term in one country may not be so in another. In some cases, even if your trademark has visual elements (i.e. in a logo), a foreign trademark office may oppose your application on this basis.
This is something you should consider if you are planning to expand your business overseas. You don’t want to find yourself in a situation where you get stuck in another country and have to resort to rebranding.
E-commerce can put you at risk
In most cases, if you are trading only in Australia, you won’t need to determine whether a term is considered descriptive or generic in another country. However, as many businesses turn to online platforms to sell their products, this problem may continue to occur.
If you sell your product under a name that you consider generic, but the term is registered as a trademark in a country where you sell, you may be infringing the rights of the owner of that trademark registered abroad.
Not keeping up to date with the current state of intellectual property law can put you at risk. Below, we’ll describe some ways you can protect yourself against unintentional trademark infringement.
What can you do now?
Register your trademark
The best defense against an infringement action is a registered trademark. At the very least, the onus will be on the other party to demonstrate that their claim is stronger than yours (i.e. if they have been operating for longer and have a stronger reputation or association with that brand. ).
Even if you have used the mark without registration so far without any problems, the official registration of the mark will give you more secure protection. In the event that someone alleges a violation, you can simply rely on registration as a defense.
If you want to enjoy international trademark protection, you can get it in two ways. You can file directly through the office of a foreign country, or you can file a Madrid Protocol application. The latter approach allows you to file an application based on an existing national (ie Australian) mark and designate other countries linked to a Madrid Protocol “parent” application. This method is often much more cost effective and easier to manage.
Carry out research
Searching the trademark database in Australia and internationally is a great way to determine if a trademark is available or if a term you consider generic is free to use. You will need to select the particular category of products and services to cover in the results when you search. If a conflicting mark does not appear, your mark may be available for your use and possibly registration. However, it is also possible that the mark is too descriptive for you to register it.
You can extend your searches to online marketplaces, selecting the particular country for the search results to determine if your brand is commonly used by traders in your particular industry.
Key points to remember
Before choosing a trade name or logo for your business, consider the following:
- is the mark already taken or is it considered descriptive by the general public? ;
- if you are selling your products or services overseas, remember that brands work country by country and you may need to register overseas; and
- The Internet is your friend, and you should try to use it to find businesses using a brand that can be considered similar or identical to yours.