Stepping Out of the Shadows: The Crucial Lesson of Decker v. UGG and Trademark Protection

Vivian Nguyen • May 12, 2025

Imagine pouring your heart and soul into building a brand. You craft a catchy name, design a distinctive logo, and cultivate a reputation for quality. Then, out of nowhere, someone else starts selling similar goods using a confusingly similar brand. Frustrating, right? 

Unfortunately, this scenario plays out far too often, highlighting the critical importance of trademark protection. The legal battle between Deckers Outdoor Corporation (the owner of the famous UGG brand) and Australian Leather Pty Ltd (formerly known as UGG Since 1974) serves as a powerful reminder of why securing your trademarks is not just a good idea – it's essential for the survival and growth of your business.

For years, Australian Leather sold sheepskin boots bearing the term "UGG." Deckers, having registered the UGG trademark in numerous countries, including Australia, took legal action alleging trademark infringement. The case, Deckers Outdoor Corporation v Australian Leather Pty Ltd, involved complex arguments about the descriptiveness of the term "ugg," its generic use in Australia, and Deckers' rights as a registered trademark holder.

Ultimately, while the legal intricacies spanned years and involved appeals, the core message for businesses is clear: registering your trademarks provides significant legal advantages and protection against potential infringement.

Here's why the Decker v UGG saga underscores the importance of having trademarks:

1. Establishing Exclusive Rights:

A registered trademark grants you exclusive rights to use your brand name, logo, or other identifying marks in connection with specific goods or services. This means you have the legal standing to prevent others from using confusingly similar marks that could mislead consumers and damage your brand reputation. In the Decker v UGG case, Deckers relied heavily on their registered trademarks to assert their exclusive rights.

2. Deterring Infringers:

The very existence of a registered trademark can act as a deterrent to potential infringers. Knowing that your brand is legally protected may discourage others from attempting to trade off your goodwill and reputation. While it didn't entirely prevent the dispute in Decker v UGG, the registration certainly strengthened Deckers' position.

3. Facilitating Legal Action:

When infringement does occur, having a registered trademark makes it significantly easier to pursue legal action. You don't need to prove years of established reputation or "passing off" – the registration itself provides evidence of your ownership and rights. This streamlines the legal process and can lead to more efficient remedies, such as injunctions to stop the infringing activity and potential damages.

4. Building Brand Value:

Trademarks are valuable assets. As your brand gains recognition and consumer trust, your trademark becomes a symbol of that goodwill. Protecting your trademark safeguards this valuable asset and contributes to the overall worth of your business.

5. Expanding Your Business Globally:

If you have ambitions to expand your business internationally, registering your trademark in relevant countries is crucial. Deckers' global registrations were key to their ability to pursue action against Australian Leather in various jurisdictions.

The Takeaway for Your Business

The Decker v UGG case serves as a cautionary tale and a powerful endorsement of proactive trademark protection. Whether you're a startup with big dreams or an established business looking to grow, investing in trademark registration is a vital step in safeguarding your brand identity and future success.

Don't wait until you're facing an infringement battle to realise the importance of a trademark. Taking proactive steps now can save you significant time, money, and stress down the line.


By Maria Valenzuela May 15, 2025
While Australian family law Courts had the discretion to consider family violence in property settlements, it often felt like a secondary concern, a vague principle overshadowed by more traditional notions of financial contributions. The true cost of the alleged abuse Cassie endured – the emotional trauma, the potential career setbacks, the erosion of her financial independence, the long-term psychological impact – wasn't always fully accounted for in the final division of assets.
By Razeeha Reilly May 12, 2025
For those outside the legal profession, the concept of a subpoena might seem like something confined to television dramas. However, it is a crucial tool in the pursuit of justice, allowing parties to obtain necessary information and testimony to support their case. In Australia, the power to issue a subpoena is vested in the Courts, but it is not a power to be exercised lightly. There are important thresholds that must be met before a Court will compel a person, even a megastar like Taylor Swift, to appear in Court or produce documents.
By Vivian Nguyen May 11, 2025
The digital landscape offers incredible opportunities for businesses to reach a wider audience and thrive. However, with these opportunities come important legal responsibilities. If you're running or planning to launch an e-commerce business in Australia, understanding the key legal requirements is crucial for protecting yourself, your customers, and your brand. Ignoring these obligations can lead to significant penalties and reputational damage. Let's delve into some essential legal aspects you need to consider.
By Maria Valenzuela May 11, 2025
Selecting the right family lawyer is paramount when navigating the complexities and emotional strains of family law matters. This decision can significantly impact the outcome of your case and your overall experience. Beyond legal expertise, finding a lawyer who understands your unique needs and with whom you feel comfortable is crucial.
By Vivian Nguyen May 11, 2025
The world of property transactions has undergone a significant transformation in recent years, largely driven by the adoption of digital technologies.
By Maria Valenzuela May 3, 2025
Parenting plans are essential tools in family law that provide a structured framework for co-parenting after separation or divorce. As family lawyers, we view parenting plans as a roadmap for the child's future, outlining key aspects of their care and upbringing, such as living arrangements, time spent with each parent, communication, education, and healthcare.
By Vivian Nguyen May 3, 2025
Like any such entity, the experience with the NSW Trustee and Guardian can sometimes feel impersonal. Individuals might find themselves feeling like another case number, and the level of support and the resulting outcomes can, unfortunately, be dependent on the specific caseworker assigned.
By Vivian Nguyen April 26, 2025
This blog post explores some common areas of disagreement between business partners and offers insights into how these situations can be navigated.
By Maria Valenzuela April 26, 2025
Prenuptial agreements, once considered taboo, are gaining popularity among millennials as a practical and proactive way to protect their assets and clarify financial expectations in a relationship. As family lawyers we view prenups as a modern tool for couples to navigate the complexities of marriage and potential separation with greater certainty and control.
By Vivian Nguyen April 25, 2025
This blog post aims to shed light on the key aspects of contesting a will, helping you understand your rights and the steps involved. Crucially, it also serves as a vital warning to those drafting a will: seek proper legal advice, especially if you anticipate potential challenges.
Show More