Tuesday, January 17, 2006

Ugg Boots and successful marketing

Kim Weatherall points out that 'Ugg Boots' is now a generic term and therefore cannot sustain a trade mark registration.

Basically, if a term is generic, it means that use by one person or organisation on one product is disallowed, on the basis that nobody should be able to monopolise a generic term.

This, to me, is one of the great contradictions of trade mark law. On one hand, we create an incentive for a term to be marketed so that it is associated with a particular item. Then, if the marketing is excessively successful, we take away the reward that the system is supposed to generate, in terms of a monopoly over that term.

Think of phrases like 'Eski'. Originally, a product name, marketed as a trade mark. Now, the generic term for plastic bins in which one places ice and drinks/food to keep them cool. The marketing was so successful that the product is an eski, regardless of who makes it. So successful that we remove the reward for the original makers of the Eski (not eski).

To my utter delight, on my recent trip to New Zealand, I discovered they are called 'chilly bins'. Or, as my Kiwi friends say, 'cheely buns'.


Blogger Dash Brannigan said...

Does anyone ask the question of where the word “ugg” comes from? I’m fairly sure that it’s just what the style of boots is called (and has been for a long time). If you can trademark a name of a style of boot would it be possible to trademark “Cowboy” boots, or “Head-Kicker” boots?

I have an inkling that this is a case of someone trade marking a word in common use after the fact. When were the original trade marks for the words “Ugg Boots” issued? Ugg boots have been used since WWI, but have only been cool since rich bratty heiresses started wearing them. I don’t think this is a case where you have branding become so successful that the brand name becomes interchangeable with the product name. For example, eski (like you said), Hoover or Panadol.

I think this example can highlight the difference in common usage between two countries. In the State “Ugg” might not be in common usage but in Australia it most certainly is (and has been for a while, my mum had a pair). Think of the legal difficulties that arise from this. If US trademarks become enforced in Australia and vice versa where does common usage lie, since what is common is specific to culture?

This would make a rich area of inquiry.

3:31 pm  
Blogger Not my real name said...

Actually, 'Ugg' or 'ugh' was coined in the (I think) 1970s as a shortening of ugly.

The trade mark was originally owned by an Australian company, but was bought by a US company called Decker. Decker tried to stop small Australian producers from calling their boots Ugg boots and IP Australia, the bueraucracy behind trade mark registration, determined that Decker was not able to maintain the trade mark as registered.

So, the mark was registered, then it developed into a generic term. Generic terms are not allowed on the register and can be removed, even though previously valid.

Seems funny to me.

4:24 pm  
Blogger Dash Brannigan said...

Have a look what wiki says about ugg boots


Ugg boots have been called thus for over 200 years.

4:33 pm  
Blogger Dash Brannigan said...

Here’s in idea for you. Through the 80’s and early 90’s the term IBM Compatible (usually shortened to IBM) became a generic term for pretty much any computer that wasn’t made by Apple (BTW Ipod is becoming common use for any MP3 player). I wonder if this was of concern to Big Blue. Wouldn’t that be ironic? The company which abuses the IP system in the states the most undone by it…

4:58 pm  
Blogger Not my real name said...

You're right - it seems there is a lot of it going on, given how important brands are to companies now that they don't have a lot else by which they can differentiate.

IBM had that reputation, but have you seen they have recently made 500 patents public? It is probably right that they are not very valuable ones, but the 'abuser' might be seeing the value in changing their business model. Possibly, more value is created by collaborating than holding the cards so close to the chest.

5:02 pm  

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