Updated: May 13, 2019 / 5:18 PM
A small Australian boot-maker has lost a whopping $450,000 following a legal war with UGG, the American footwear giant. After a trademark trial that was carried out for four days in a federal court in Chicago, the jury agreed that selling 12 pairs of sheepskin-lined boots that carried the “ugg” name to consumers in the U.S. between the years of 2014 and 2016 through its e-commerce site, Sydney-based Australian Leather had indeed infringed the trademark of UGG, a Deckers brand. However, the drama for Australian Leather doesn’t stop there. They also may potentially be on the hook for millions of dollars in legal fees that stem from the 3-year lengthy lawsuit.
Deckers had first filed the lawsuit back in March 2016, declaring that Australian Leather’s “virtually identical” boots break their valuable trademark rights in the word “UGG,” as well as its design patent. They requested a U.S. federal court to force the small business to limit their sales of its Australian-made boots to both Australia and New Zealand to not interfere with their purchases of UGG’s boots and its trademark-protected name.
However, the case is not exactly over; there is an impending non-jury trial at play in regards to Deckers’ UGG-specific design patents. As mentioned in a filing by Australian Leather early this month in support of eliminating the design patent issues from the main jury trial, “The parties have stipulated that each of the four Deckers design patents, in this case, is valid and enforceable, and was infringed by Defendants.” A bench trial before the judge will then determine whether such infringement was willful.