At his warehouse in western Sydney, Eddie Oygur’s UGG boots fill floor-to-ceiling shelves, ready to ship nationwide or pick up by wholesalers.

But it is the sale of a dozen boots that threatens to bring down his business.

Uggs sheepskin boots started life on the feet of Australian surfers, but their worldwide popularity has seen them more recently worn by Hollywood celebrities.

In 2019, a Chicago district court found that Mr. Oygur had infringed trademarks of Deckers Outdoor Corporation, an American footwear giant, owner of the UGG brand, which sells sheepskin boots globally. whole.

Now the Sydney boot maker is taking the legal battle to the next level – its appeal will be heard by a U.S. federal appeals court in Washington DC on Wednesday (U.S. Time).

“This is the epitome of the David vs. Goliath battle,” said one of Oygur’s lawyers, former Senator Nick Xenophon.

“A small Australian ugg boot maker taking on a multi-billion dollar US company.

In 2016, Deckers sued Mr. Oygur and his company Australian Leather, for selling 14 items on its website to U.S. customers – four of which were purchased by Deckers investigators.

“I was shocked – I just thought it was a generic term in Australia and was selling on a ‘.com.au’ website,” Mr. Oygur said.

“I had no choice but to fight… If they win, I will probably lose everything.”

In Australia there are many companies that sell labeled products like ugg boots and Deckers only owns the brand for its own stylized logo.

But in other markets, notably the United States and the United Kingdom, it registered the trademark of the term “UGG”.

A US jury found that Australian Leather willfully infringed trademarks registered with Deckers – UGG and the term “CARDY” referring to knitted ugg socks.

Mr. Oygur was ordered to pay US $ 450,000 in damages, plus legal fees.

“They do have orders against him for $ 3.5 million,” Xenophon said.

The value of the products he was selling in the United States was only about $ 2,000.

“It’s hard to see how Deckers would be damaged to the tune of US $ 450,000 from the sale of 12 sets of UGG boots in the United States,” said trademark attorney Nicole Murdoch.

‘Very high stakes’ battle for UGG

In mounting his defense, Mr. Oygur’s legal team did not deny that he made the sales in the United States or that his boots had the word “ ugg ” on their label – instead, they challenged the validity of Deckers’ UGG mark.

Mr Oygur argued that ugg was not only considered generic in Australia, where it is commonly understood as sheepskin boots, but also in the United States.

His legal team gathered evidence from owners of American surf shops that sold UGG boots in the 1960s and 70s, as well as advertisements in magazines of the time.

However, Deckers argued that Americans know ugg as a brand name and not as a generic term, presenting consumer surveys as proof.

The judge concluded that “even assuming that the term was generic in Australia, no reasonable jury could conclude that it was generic in the United States”.

Mr Oygur and Australian Leather are now appealing on a number of grounds, including that the district court used the wrong legal standard to determine whether the term is generic in the United States.

They argue that the court used a test that is relevant when a brand name becomes a generic term and not when a term is already generic before the brand name becomes a trademark.

This is far from the first legal battle over ugg – Deckers has sued a number of shoe manufacturers for selling products outside of Australia.

In one case, featured in the documentary The Good, The Bad and The Ugg, American company Koolaburra hit back on similar grounds, arguing that the term was generic in the United States.

However, the court ruled in favor of Deckers and Koolaburra did not appeal.

The owners at the time sold the brand, which was later bought by Deckers itself and is now marketed as “Koolaburra by UGG”.

Mr Xenophon says Mr Oygur’s case has now gone further than those that came before it.

“If he loses it effectively means financial ruin for him. Deckers on the other hand, if they lose this business, it means their ugg brand is worthless … very high stakes.”

Trademark lawyer Nicole Murdoch recognizes that the consequences could be significant.

In court documents filed before the appeal, Deckers dismissed Australian Leather’s arguments and referred to a United States Supreme Court ruling, which found that the domain name Booking.com was not a generic term.

“We have the raw material here”

Eddie Oygur says he has pursued the case thus far not only for himself, but in hopes of reviving the local export industry.

He believes ugg boots made in Australia would be in demand, compared to those made in China, for example.

“It would be such a good thing for our economy, imagine all the ugg boots manufacturers in Australia selling their products all over the world,” he said.

Mr Xenophon said he called on the federal government to support the case, but received no support.

He argued that the term warranted protection, in the same way that the European Union protects the regional names Champagne and feta.

“Right now a uniquely Australian product cannot be sold by Australian companies anywhere in the world, especially in the US and European markets, because of this brand which we believe should never have been. granted, “said Mr Said Xenophon.

Online opportunities also come with risks

As online shopping opens up a global market for Australian brands, Ms Murdoch says it also opens up the risk of trademark infringement.

Ms Murdoch said Deckers and other global companies will likely continue to champion their brands in the age of online shopping and digital advertising.

“It will not diminish at all, in the end, brand owners will assert their rights and they will prevent small traders from violating their rights on platforms like Facebook, on Instagram, all sales platforms. which are multinational. platforms. “

Deckers did not respond to the CBA’s request for comment on the case.

A Deckers website, “UGG is a brand,” disputes some of the defenses raised by Australian boot makers.

“In appropriate circumstances, Deckers takes action against dealers in Australia and elsewhere who engage in such deceptive marketing practices,” the website read.