Boot battle turns Ugg-ly

By KATHY MARKS

Tony Mortel's hair is standing on end, thanks to equal doses of gel and outrage.

"Who do they think they are, telling us what we can and can't call our product; trying to stop us from making a living," he fumes.

"Well, they can stick their demands where the sun doesn't shine."

Mortel comes from seven generations of bootmakers and, for the past 45 years, his family have been making Uggs, the once-dowdy sheepskin boots now worn by the likes of Gwyneth Paltrow and Kate Moss.

Their factory in Australia's Hunter Valley turns out 16,000 pairs a year. At least it used to, before a large United States company began taking an unwelcome interest in their affairs.

Staff at Mortels Sheepskin Factory had just returned from their Christmas break when a letter arrived from the Melbourne solicitors of Deckers Outdoor Corporation, a California conglomerate.

The letter, sent to 19 other Australian firms, informed them that Deckers owned all rights to the name Ugg and instructed them to stop using it or face litigation.

"I just laughed," says Mortel.

"I thought they were crazy. I threw it in the bin."

But it was no laughing matter. Soon afterwards, at the instigation of Deckers, Mortels was ejected from eBay, the internet auction site where it sold Uggs to American consumers.

Last Wednesday, it was ordered by Icann, the internet regulatory body, to stop using "Ugg" in its domain name.

The two dozen traders affected by such legal moves are reeling from shock and disbelief. For decades, they have been part of a thriving cottage industry founded on an Australian product that - according to folklore - dates back to the 1920s, when shearers would wrap sheepskin round their feet to keep warm in the sheds.

Uggs, they argue, have always been called Uggs, originally an abbreviation of Ugly. No one bothered with trademarks because Ugg was a generic term.

Brian Iverson, owner of Blue Mountains Ugg Boots, says: "It's like saying you can't call a car a car."

The problem is: someone did bother with trademarks.

In 1971, local surf champion Shane Steadman decided to capitalise on the popularity of Uggs among Australian - and visiting American - surfers, who were starting to recognise the appeal of a snug boot when they emerged from the ocean.

Steadman began selling Uggs and registered the name.

He was not the only Australian wave-rider with a sharp eye for a business opportunity. In 1979, so the story goes, Brian Smith arrived in New York with a few pairs of Uggs in his backpack.

He set up a company, Ugg Holdings, registered the trademark in 25 countries and in 1995 sold out to Deckers.

For a long time, not a peep was heard from the new American owners. The company sent out a flurry of warning letters five years ago, but did not follow them up.

According to Middletons, its Melbourne lawyers, it was only when Australian manufacturers began selling Uggs on the internet to meet soaring overseas demand that Deckers felt obliged to crack down.

Not surprisingly, the Australian firms - most of them small family outfits - are unimpressed. They say Smith was awarded the trademarks in error and are planning court action to have them rescinded.

Their only other choice is to give up and go under - for without the name Ugg, they cannot sell their boots.

"People round the world know them as Ugg boots," says Mortel.

"My family have been marketing them as Uggs for 45 years."

The Australian traders have united under the banner of the Ugg Boot Footwear Association and set up a fighting fund.

At the Mortels factory, about 160km north of Sydney, the latest Uggs are arrayed in a shop emblazoned with "Ugg Boots And Slippers" in huge lettering.

Tony Mortel has been told to remove the word Ugg from the window.


His father, Frank - now 71 and retired, is furious about the turn of events.

Frank emigrated from the Netherlands in 1958, bringing a few sewing machines and setting up a tiny sheepskin factory.

"We called them Uggs from the start," he says. "I'm sure this American company is just trying to frighten people off."

Tony Watson, a partner with Middletons, says the portrayal of Deckers as "some big bad aggressive American company that likes squashing small businesses" is unfounded.

"We don't want litigation, but people have to understand the bigger picture," he says.

Deckers transformed Uggs into a high-fashion item, spending US$7 million on marketing over the past decade and sending boots to personalities such as Oprah Winfrey.

"My client has developed a marketplace and is trying to protect it," says Watson.

Australian traders say they have been exporting for decades. "Between us, we must have spent far more than Deckers on marketing," says Tony Mortel.

Ironically, Deckers brazenly exploits Ugg's Australian origins through its choice of brand name.

Claims that it uses American (rather than Australian) sheepskins are flatly denied by Watson, although he admits that, as of a few months ago, "some" Uggs were manufactured in China, the rest produced in Australia and New Zealand.

He compares "Ugg" with "Biro" and "Hoover" which, although commonly used, are protected by trademark.

A false comparison, say Mortel. In those cases, a product was developed and marketed and a name invented and trademarked.

In the case of Ugg, all the hard work was put in by others, then Deckers came along and bought the name.

"We're going to carry on fighting," he says.

"We know we're in the right, and we know we're going to win. It's just a matter of time."

- INDEPENDENT