Ugg Case

We are extremely pleased with how the appeal went yesterday before the US Court of Appeals for the Federal Circuit. The Court appeared to accept our argument that the doctrine of foreign equivalents should apply to any foreign word regardless of whether the term was an English or non-English word.

The Court was less impressed with Deckers’ argument that the doctrine should only apply to foreign non-English generic terms. As stated by the Court to Deckers’ lawyer:
 
"Is there any earthly reason why we would have a different rule for an English-speaking foreign nation than a foreign speaking foreign nation when you’re taking words out of that respective country’s dictionary and using them here for a United States trademark for the very goods that the term is used for in that foreign country?”
 
When Deckers’ lawyer failed to address the question asked, the Court reiterated its earlier question in somewhat more emphatic terms:
 
“Sir, all I am trying to figure out is, is there any sensible reason why there should be a different rule for a generic word from an English speaking foreign nation than a generic word from a foreign speaking foreign nation?

The US Court of Appeals has reserved its judgment. We expect a favourable decision within the next two to three months.

Ugg Boot appeal

 VIDEO: Aussie company fights for survival against US footwear giant Decker over UGG boot trademark

https://www.abc.net.au/news/programs/the-business/2021-05-05/aussie-company-fights-for-survival-against-us/13330762

Ugg boot case appeal

Our appeal to the US Court of Appeals for the Federal Circuit is to be heard later today at 10 am in Washington DC (or 12 midnight Australian time) .

It's pretty much an all or nothing case for both parties - if our client, Eddie Oygur, loses he will be up for $A3.5 million in damages and Deckers' attorneys fees and if Deckers Outdoor loses the appeal their UGG trademark will be deregistered, which will be game over for Deckers given UGG products contribute about 80% of their annual sales.

Eddie is being represented by Nick Xenophon, Mark Bagley and myself.

https://www.abc.net.au/news/2021-05-05/trademark-battle-for-australian-ugg-boots-back-in-us-court/100114174

Australian Competition and Consumer Commission v Smart Corporation Pty Ltd (No 3) [2021] FCA 347

I was having a look at the A4WD case and noted the following customer service gems:

* Your verbal diarrhoea is completely ignorant and lacking of any sense or meaning whatsoever.

* This type of blatant stupidity is not something we take lightly and we will happily progress to legal action if necessary.

* Your email is complete nonsense, and we are very confident that our fact based stance will hold up over your whinging in any court.

* We have had a good laugh reading through your verbal diarrhea, as your stupidity amazes us.

* We have never come across someone so utterly stupid and unaware of their obligations under the contract and you are delusional if you think that we are going to make any exceptions for a customer like you.

* We look forward to you continuing to make a fool of yourself in court.

* Get a lawyer so I can sue your ass of you moron

...and my person favourite - an email to a customer (who was incidentially employed as a NSW Magistrate) which read, in its entirety:

* F##K Off

Sounds like they received their customer service training at Trump University.

Australian Business Law Review, Vol 49, Part 1

The latest ABLR is out and features four excellent articles:

* “Culture” Is Key – An Analysis of Culture-focused Techniques and Tools in the Regulation of Corporations and Financial Institutions – Vicky Comino

* Security for Workers in an Insecure World of Work: Establishing Freedom of Association and Collective Bargaining as Fundamental Rights for Australian Workers – Nicholas Saady

* COVID Conundrum: The Influence of Regulatory Regimes on Cross-Border Mergers and Acquisitions in Australia and India – Zubin Bilimoria

* Business Interruption Insurance and the COVID-19 Pandemic – Samuel Walpole and William Isdale

I would like to encourage prospective authors to consider submitting their articles to the ABLR. One significant advantage of seeking to publish your article in the ABLR is our much quicker turnaround times compared to other leading legal journals. We aim to publish practical business law articles on topical issues in a timely manner, which means we have to operate on shorter time frames.

Recent work - Thermomix (The Mix Australia Pty Ltd)

Just completed the third and final independent review of Thermomix's Australian Compliance Program.

It has been fantastic working with Thermomix over the last three years - a highly professional and innovative organisation with a very strong culture of compliance.

In particular, it was amazing to see how they quickly and effectively they were able to adjust their business model to respond to the challenges presented by COVID-19.

https://thermomix.com.au/

ACCC v Superfone

It is always a shame when regulatory action drives a genuine business out of business.

Here was a very small business which made some mistakes, admitted those mistakes and then sought to come to a settlement which would have allowed the business to continue trading and servicing its 1200 customers.

Unfortunately, that was not to be. The ACCC asked for a penalty of $400,000 plus redress which equated to 44% of the small business’s annual turnover and more than 80 times its net profit.

The ACCC ended up getting a penalty of $300,000 plus redress which equated to 34% of the small business’s annual turnover and more than 60 times its net profit. The ACCC was also awarded costs.

Definitely no winners here!

NB: I represented the company in the ACCC investigation and litigation. I did the litigation on a pro bono basis.