UGG FIGHT GOES GLOBAL

• Legal opinion from leading public international lawyer says US in breach of WTO Agreement

• Now it is up to the Australian Government to trigger a dispute mechanism with WTO

• Xenophon writes to Prime Minister and Opposition Leader asking for their commitment

In a dramatic development in the battle to bring the ‘ugg’ name back to Australia, a leading international trade lawyer has provided an opinion that the US is discriminating against Australian nationals in preventing them from selling ‘ugg’ products in the US and 129 other countries where the UGG trademark is registered.

Ugg boots were first made in Australia in the early 1960s and were a generic name for a sheepskin boot.

In 1986, ‘UGG’ was trademarked in the US despite a legal principle — the Doctrine of Foreign Equivalents — that a generic name in one country prevents its trademarking in another. It has been alleged that that trademark was improperly given in the first place.

In 1995, US global footwear giant Deckers Outdoor Corporation bought the UGG trademark and expanded the trademark into 129 countries, as well as aggressively enforcing the trademark. It meant that Australian ugg bootmakers could no longer sell ugg boots to the rest of the world (except in New Zealand, where it is also generic).

In 2016, Deckers began aggressively pursuing Aussie bootmaker Eddie Oygur of Australian Leather Pty Ltd for selling thirteen pairs of ugg boots in the United States. Four of those pairs were bought by agents of Deckers in what is commonly known as ‘trap purchases’. Despite the boots being bought on Eddie’s australianleather.com.au website, the matter went to trial in Chicago in May 2019 and Eddie had penalties and Court costs awarded against him of $3.3 million. This is in addition to the $1.5 million in legal costs that he has incurred.

Independent SA Senate Candidate, Nick Xenophon, has been part of Eddie Oygur’s legal team and has been acting for his pro bono along with an Australian lawyer (and former ACCC director), Michael Terceiro, based in Sydney.

Late last year, a last-ditch appeal to the U.S. Supreme Court was rejected.

As a result of that rejection by the US Supreme Court (no reasons were given), Eddie’s Australian legal team sought advice from leading international trade barrister, Dr Sean A. Baron Levi, of State Chambers in Sydney.

THE ADVICE ON THE WTO

Dr. Baron Levi has provided an opinion to Eddie’s Australian legal team that states, in part, that:

‘It is demonstrably clear that the United States – in its failure to apply a relevant limitation upon the availability, acquisition, scope, maintenance and enforcement of intellectual property rights in favor of Australian nationals, which it applies in favor of the nationals of other (foreign-language) States – discriminates against and disadvantages Australian nationals, entailing a violation of Article 4 of the TRIPS Agreement (emphasis added)

Dr. Baron Levi also is of the opinion that the Australian Government, under the WTO Understanding on Rules and Procedures Governing the Settlement of Disputes (DSU), in order to seek to resolve the issue pursuant to

Article 4. The opinion also states that:

‘If a mutually satisfactory solution is not reached, Australia may request that the Dispute Settlement Body of the WTO establish a panel to resolve the dispute’

The opinion of Dr. Baron Levi is that:

‘Any appropriate resolution or remedy is likely to require the United States to bring its law into compliance with Article 4 of the TRIPS Convention by ensuring application of the doctrine of foreign equivalents to Australian generic terms, including ugg’

Independent SA Senate Candidate, Nick Xenophon, has today written to Prime Minister Scott Morrison, Opposition Leader Anthony Albanese, Attorney-General Senator Michaelia Cash, Shadow Attorney-General Mark Dreyfus, Trade Minister Dan Tehan, Shadow Trade Minister Madeleine King, Industry Minister Angus Taylor, and Shadow Industry Minister Ed Husic, asking that they urgently commit to triggering the dispute resolution mechanisms of the WTO.

“This saga has been going on for far too long. This has been devastating to Eddie Oygur financially, and the US Supreme Court rejecting the appeal without any reasons being given was another great disappointment. The fact is that going to the WTO, with this very strong opinion from one of Australia’s leading international trade lawyers, with expertise in the WTO dispute resolution procedures, is the last best hope to bring the ‘ugg’ name back home.

Both the Government and the Opposition have been talking about the importance of Australian industry and reviving Australian manufacturing. Here is their chance to get the ‘ugg’ name back home, and in the process create up to 4,000 Australian jobs because bringing the ‘ugg’ name back home would have that effect. In the same way that the French have the trademark on champagne, the Italians on gorgonzola, and the Greeks on feta, the implications of this would be huge.

Here is a chance for the major parties to put their money where their mouth is in terms of supporting Australian industry, and supporting this Aussie battler, Eddie Oygur, who has taken the fight all the way to the US Supreme Court.

What happened to Eddie should not have happened, and here at least is a pathway to remedy this great wrong, and to bring the ‘ugg’ name back home.”

Nick Xenophon said that if elected to the Senate:

“This would be a priority because bringing the ugg name back home, is a ‘litmus test’ of the commitment of any Australian Government to do the right thing by Australian manufacturing and to remedy this great injustice. It should never have got to this and it’s time we reversed this great travesty.”

Eddie Oygur is in Adelaide today and will be holding a media conference with Graeme Spencer of Huggys UGG Boots. Graeme has taken over from his late father, Charlie, who first made ugg boots in 1962. Charlie Spencer is widely credited as the founder of ugg boots and began selling them to John Arnold Surf & Ski Shop in the mid-1960s before John Arnold himself began to export them in the US from the late 1960s.

Fact is if the ‘UGG’ trademark was brought back home he could be employing literally dozens of Australians, as could hundreds of other ugg manufacturers across the country so that UGGS could be exported to the rest of the world.