Ugg Australia’s parent company, Deckers, has named H&M in a trade dress and design patent infringement lawsuit. According to Deckers’ complaint, which was filed last week in the U.S. District Court for the Central District of California, a federal court in Los Angeles, the Swedish fast fashion giant is selling boots that infringe its intellectual property rights, namely, trade dress and design patent rights in Ugg’s “Bailey Button” boot.
On the heels of a recent resurgence of its ugly-yet-very popular during the early 2000’s boots, Ugg Australia’s parent company, Deckers Outdoor Corporation, has filed a number of multi-million-dollar patent infringement lawsuits against retailers offering “substantially similar” boots. Named in individual lawsuits recently: J.C. Penney, Target, Gina Shoes (the entity tasked with manufacturing and marketing footwear for Rampage, RocaWear, and Nicole Miller), among others, and now, H&M.
Per Deckers, H&M is a competitor of the famed boot maker and is stocking boots that intentionally infringe its design patent-protected boots, namely, its button design (which is embodied in design patent no. D599,999). Deckers further claims that such infringement, as well as the related trade dress infringement, which is listed as a claim, was done “intentionally, fraudulently, maliciously, willfully, wantonly, and oppressively, with intent to injure Deckers in its business and with conscious disregard for Deckers' rights.”
Deckers alleges that in “an effort to exploit [its] reputation in the market,” H&M has “deprived Deckers of the right to control the use of its intellectual property.” As a result, Deckers is asking the court to immediately and permanently prevent H&M from selling infringing footwear. It is also seeking a recall of the products from H&M, and damages that include a disgorgement of the profits that the fast fashion retailer earned in connection with the infringing footwear, as well as compensatory damages, treble damages for willful infringement and attorneys’ fees. The individual lawsuit seeks upwards of $100 million in damages.
* The case is Deckers Outdoor Corp. v. H&M Hennes and Maurtiz, L.P., 2:17-cv-00103.