Section 92 of the Australian Trade Marks Act permits an application to be made for removal of a registered trade mark if the trade mark has not been used by the owner or an authorised user in relation to the relevant goods or services for at least 3 years.

Usually a threat to make such an application is accompanied by an offer to buy the trade mark (for an amount less than the cost of litigation but covering the cost of registration) but in some cases such an offer is not appropriate.

In the case of UGH-BOOTS there were numerous manufacturers of sheepskin boots (including the applicants) using the names ug, ugg and ugh and variants of those names.

An application was made in 2003 for removal of the UGH-BOOTS trade mark. The decision was handed down on 16 January.

The hearing officer found:

The evidence overwhelming supports the proposition that the terms UGH BOOT(S), UG BOOT(S) and UGG BOOT(S) are interchangeably used to describe a specific style of sheepskin boot and are the first and most natural way in which to describe these goods which should innocently come to the minds of people making this particular style of sheepskin boot.

But there was no evidence of use of UGH-BOOTS (with the hyphen).

The trade mark owner opposed the application but was not able to satisfy the Hearing Officer of the mark’s use and he directed the mark’s removal. The decision is subject to appeal.

For comment see Weatherall’s Law