Say “Ugg” in the UK and you’ll picture the classic tan boots, trademarked, well marketed, and sold by the UGG brand. But say “ugg” in Australia or New Zealand, and you’ll likely get a different response. There, it’s not a brand, it’s a boot. A locally made sheepskin boot, to be exact.

And that difference in meaning has led to one of the most interesting international trademark disputes in recent years.

The Backstory: Generic vs Brand

In Australia and New Zealand, “ugg” is a generic term. It has been used for decades to describe sheepskin boots, often handmade and produced by a number of small businesses. These boots are part of surf culture and winter wardrobes alike, and calling them “uggs” is as normal as calling tissues “Kleenex.”

But in the UK, US, and over 130 other countries, “UGG” is a registered trademark, owned by Deckers Outdoor Corporation. In these countries, no one else is allowed to use the word “Ugg” on sheepskin footwear.

So when an Australian manufacturer exported just 12 pairs of sheepskin boots labelled as “Uggs” outside Australia, Deckers sued. And they won.

The result? While Australians can keep calling their boots “uggs” at home, they cannot sell them internationally using that name, because Deckers owns the trademark in those markets.

Why This Matters for Your Business

This case highlights something we advise on every day: your brand name is only as strong as the legal rights you hold in each market.

Too many businesses create a brand they love, invest in logos, packaging, and websites, and only then start thinking about trademarks. By that point, a naming issue can mean either a total rebrand or years of wasted investment.

If you are planning to grow internationally, or even just into new sectors or online platforms, take these steps first:

– Search early: Run a trademark search before building your brand, not after. It will flag obvious risks and give you peace of mind.

– Think long-term: Even if you only sell in the UK today, consider where your customers might come from tomorrow. Think about Amazon, Instagram, global wholesalers, or overseas licensing.

– Plan regionally: Just because you can use a name locally does not mean it will work globally. Regional rights, language differences, and local laws can all create barriers.

– Rebranding early is cheaper: If a trademark search flags problems, do not be afraid to rebrand before launch. It is far easier and cheaper than fighting a legal dispute or losing access to an entire market later.

Closer to Home: A Welsh Business Caught in a Trademark Battle

This issue is not just about global giants. A Welsh clothing business was forced to rebrand after receiving a cease and desist from a UK fashion chain with rights to the name “Snowdonia.” The business attempted to continue under the Welsh-language equivalent “Eryri,” only to have that trademark application rejected by the UK Intellectual Property Office on the grounds of geographical naming rules. Read more about the Welsh business forced to rebrand. It is a reminder that even culturally important or regionally relevant brand names must be checked for trademark risks before launch.

International Trademark Applications Are Expensive So Search First

Before you invest in international trademark protection, always start with a trademark search. It is one of the most important steps you can take and it can save you thousands.

A proper search will tell you:
– Whether your brand is already taken or too close to an existing mark
– If your chosen term is considered generic or descriptive in other jurisdictions
– Whether you are likely to face objections, oppositions, or legal action

Sometimes the best decision is to rebrand early, before you get too far in. That might feel like a setback, but it can save you significant cost, wasted effort, and damage to your brand reputation later.

Even the Famous Get Caught Out

If you think only small businesses face these problems, think again. Consider the trademark battle involving Katy Perry, where an Australian designer initially won her case to stop the global pop star’s fashion brand from using a similar name in Australia. Although the decision was later overturned on appeal, the dispute still shows how even celebrities can face serious legal hurdles when expanding into markets with existing rights holders. Read about the Katy Perry trademark dispute. It serves as a reminder of the value of conducting thorough trademark searches before launching any brand internationally.

Protect First, Expand Second

Even if you are only operating in the UK now, consider your growth plans. Once a brand gets traction, it becomes harder and more expensive to change course. What’s more, failing to secure your rights in time could mean missing out on global markets entirely.

Monitor Third: Do Not Let Others Undermine What You Have Built

The UGG case is a perfect example of a company not only registering its trademarks globally but also actively enforcing them. Deckers did not just own the trademark. They were monitoring the market, identified unauthorised use, and acted quickly to defend their rights. That enforcement is what ultimately stopped the Australian company from selling boots as “Uggs” internationally.

This kind of brand protection does not happen by accident.

After registration, the next step is monitoring. Monitoring helps you track new trademark applications that may conflict with yours, giving you the opportunity to oppose them before they are registered. Without this, you risk losing exclusivity over time as similar brands emerge unnoticed.

The other key layer is representation. A professional representative ensures you receive and respond to IPO communications, deadlines, and legal notices promptly. It also provides peace of mind that you are not missing critical updates or threats to your brand.

At The Trademark Helpline, our monitoring and representation service includes:

• Alerts when similar marks are filed
• Handling IPO correspondence
• Advice on filing objections or oppositions
• Ongoing strategic support as your brand grows
• And much more as part of our comprehensive monitoring and representation services

You have worked hard to build your brand. Monitoring and representation ensure that effort is not quietly undermined by someone else’s application.

Need Help?

At The Trademark Helpline, we do more than file applications. We help you build defensible brands, avoid costly missteps, and plan your expansion with confidence. If you are thinking internationally, let us run a proper search before you take the next step.

It is far cheaper to change direction early than to untangle a trademark mess later.