Looking Similar Isn’t Enough? What the UGG Case Teaches Us About Patent and Industrial Design Protection

Many business owners assume that once they have registered a patent or industrial design, they are bulletproof. If someone copies their product, they can simply rely on the registration and sue.

The reality can be very different.

A recent US design patent infringement case involving UGG caught my attention.

UGG v Quince: How Can You Prove Infringement and Still Lose?

Deckers Outdoor Corporation, the owner of the well-known UGG footwear brand, sued online retailer Quince over, among other things, the design of Quince’s Australian Shearling Mini Boot.

Deckers already owned US Design Patent No. D927,161 covering the design of its UGG Classic Ultra Mini boot.

So, Deckers had a registered design patent. It sued Quince. The case went to trial.

Then something interesting happened.

The jury found that Quince’s Australian Shearling Mini Boot infringed Deckers’ design patent.

Up to this point, you would probably think: this looks like a winning case.

Deckers had a registered design patent. Quince’s product was found to infringe it. What else would Deckers need?

But Deckers lost.

The same jury also found that Deckers’ design patent was invalid. Since invalidity is a complete defence to infringement, the Court entered judgment in favour of Quince despite the infringement finding.

The dispute is not necessarily over yet. It was reported that, in July 2026, Deckers sought a new trial on the validity of its design patent, arguing that there had been a fundamental legal error in the jury instruction concerning indefiniteness.

So, we will see how the case develops.

But there is already an important lesson for businesses:

Having an IP registration does not automatically guarantee that you will win when someone copies your product.

The validity and scope of that registered right can still be challenged.

The case also raises another question that often confuses business owners.

UGG was protecting the appearance of a boot. So why was its right called a “design patent”? Isn't a patent supposed to protect how something works?

This brings us to the difference between a patent and an industrial design.

Patent vs Industrial Design: What Is the Difference?

Although patents and industrial designs can protect the same product, they protect very different things.

The easiest way to understand the distinction is this:

A patent protects how your product works.

An industrial design protects how your product looks.

In the United States, protection for an ornamental product design is called a design patent. In Malaysia, we generally refer to this type of intellectual property protection as a registered industrial design.

Let's use a simple example.

Imagine that you have spent months developing a new coffee mug. Before launching it, you know that you should consider protecting your intellectual property.

Should you apply for patent registration or industrial design registration?

The answer depends on a more fundamental question:

What exactly are you trying to protect?

Suppose your coffee mug has a new mechanism that reheats coffee after it becomes cold, and the mechanism itself is something new.

You should consider patent protection.

On the other hand, suppose there is nothing particularly new about how the mug works, but you have created a unique external shape or appearance.

You should consider industrial design protection.

And if both the technical function and the appearance are new and commercially important?

You may consider protecting both.

It is not necessarily an either-or situation.

What Are the Requirements for Patent Registration?

An invention generally needs to satisfy three basic requirements to be patentable:

1. Novelty — it must be new;

2. Inventive step — it must not be obvious to a person having ordinary skill in the relevant field; and

3. Industrial applicability — it must be capable of being made or used in an industry.

   
   

A patent is therefore particularly relevant where the competitive advantage of your product lies in its technical features, mechanism, process or functionality.

But not everything that is new can be patented, however.

Under Malaysian Patent Laws, for example, certain subject matters are excluded from patent protection. For example, discoveries and scientific theories are not patentable inventions. The same applies to certain schemes, rules or methods for doing business or playing games.

For instance, merely creating a new set of rules for a sport, or a new method of calculating commissions in a business, does not automatically give you a patentable invention.

So, being “new” alone does not necessarily make something patentable.

What Are the Requirements for Industrial Design Registration?

Industrial design protection works differently.

An industrial design (also known as design patent) is concerned with visual features such as shape, configuration, pattern or ornament applied to an article which, in the finished article, appeal to and are judged by the eye.

The design must also be new.

This means industrial design registration is particularly relevant when the commercial value of your product lies in its appearance.

Think about furniture, bottles, packaging, shoes or even the casing of an electronic product.

Sometimes there is nothing revolutionary about how the product works. What distinguishes it from competitors is simply its design on the visual appearance.

That design itself can be a valuable intellectual property asset.

What If the Shape of the Product Is Functional?

This is where the distinction becomes more interesting.

Not every product shape can necessarily be protected as an industrial design.

For example, under Malaysian industrial design law, certain features are excluded, including features of shape or configuration that are dictated solely by the function which the article has to perform.

Imagine that you have designed a new connector.

If you selected its unusual shape because you wanted it to look distinctive, industrial design protection may be relevant.

But what if the connector must have that exact shape because the shape itself allows the connector to lock into another component?

Now the shape is performing a technical function.

That may raise a very different question about whether industrial design is the appropriate form of protection and whether patent protection should instead be considered.

This is why the distinction between how something looks and how something works matters.

Patent or Industrial Design: Can You Register Both?

Yes.

A single product can contain several different types of intellectual property.

Suppose your coffee mug has:

●        a new heating mechanism;

●        a unique exterior shape; and

●        a distinctive brand name.

The heating mechanism may potentially be protected by a patent.

The appearance may potentially be protected through industrial design registration.

The brand may be protected through a trademark.

The mistake is thinking that you need to fit the entire product into only one category of IP.

Instead, break the product down and identify what is actually new and commercially valuable.

Which Is Cheaper and Faster: Patent or Industrial Design?

Practically speaking, industrial design registration is generally cheaper and faster than patent registration.

An industrial design application will typically focus heavily on the representations or drawings of the design, together with particulars of the owner and designer.

A patent application is substantially more technical.

Before filing, a patent professional will usually need to understand the invention, its background, how it works and what distinguishes it from existing technology. A patent specification then needs to be prepared, including claims defining the scope of the invention.

The examination process is also generally more involved.

Naturally, patent registration tends to cost more and take longer.

But cost should not be the sole reason for choosing between a patent and an industrial design.

The cheaper IP right is not necessarily the right IP right.

What Happens If You Protect the Wrong Part of Your Product?

Suppose the real competitive advantage of your product is its new technology, but you register only its external design.

A competitor may redesign the exterior while copying the underlying technical feature you actually cared about.

Your industrial design may not protect what you really wanted to stop.

Now reverse the situation.

Suppose the technology inside your product is relatively ordinary, but customers buy it because of its distinctive appearance.

If you focus only on protecting the technical features and ignore the design, a competitor may change the internal mechanism while producing something that looks very similar.

This is why your IP strategy should start with the product's competitive advantage, not simply the cost of registration.

Ask yourself:

What would hurt my business most if my competitor copied it?

File Before You Sell or Disclose Your Product

There is another common mistake I see businesses make.

They develop a product, launch it, advertise it, sell it for several years — and only then think about patent or industrial design registration.

By then, there may already be a problem.

Both patent and industrial design protection involve the concept of novelty.

Generally, you should consider your intellectual property protection before publicly disclosing or selling the product, subject of course to the specific laws and exceptions applicable in each country.

If you disclose the invention or design first, your own disclosure may potentially affect its novelty and jeopardise your ability to obtain protection.

So, if you intend to protect your IP:

Think about filing before disclosure, not after the copycats appear.

What Should You Ask Before Filing a Patent or Industrial Design?

Instead of simply asking, “Should I register a patent or industrial design?”, I would start with several more practical questions.

What exactly is new about my product?

Is it the technical feature, the visual appearance, or both?

What gives my product its competitive advantage?

What is the feature that customers actually value?

What is my competitor most likely to copy?

If someone copies my mechanism but changes the appearance, would that hurt my business?

If someone copies the appearance but changes the mechanism underneath, would that hurt my business?

If the answer to both is yes, then both patent and industrial design protection may need to be considered.

There is also one more important question:

Where am I going to sell the product?

Patents and industrial designs are territorial rights. Registering your IP in Malaysia generally gives you protection in Malaysia, not automatically throughout the world.

If you intend to manufacture or sell in several markets, you should identify those countries early, understand the applicable filing deadlines and plan your IP budget accordingly.

The Real Lesson from the UGG Case

The UGG v Quince dispute is interesting because it challenges a common assumption.

You can have a registered IP right.

You can take your competitor to court.

A jury can even find that your competitor infringed your right.

And you may still lose if the underlying IP right does not survive a validity challenge.

So, a good intellectual property strategy is not about collecting as many registrations as possible.

It is about identifying what makes your product commercially valuable, what your competitors are most likely to copy, and which intellectual property rights actually protect those features.

Before asking, “Should I file a patent or industrial design?”, perhaps the better question is:

What exactly about my product do I not want my competitors to copy?

Not Sure Whether to Protect Your Product with a Patent or Industrial Design?

Choosing the right IP protection starts with understanding what makes your product commercially valuable.

If you have developed a new product and are unsure whether to protect its technical features, appearance, or both, IP Gennesis can assist you in assessing the appropriate IP protection and filing strategy in Malaysia and overseas.

Contact us to discuss your product and IP protection strategy.

Written by,

Lawrence Tan  

Registered Trademark, Patent and Design Agent

LL.B (HONS), CLP

Advocate & Solicitor

Disclaimer: This article is intended for general information only and does not constitute legal or professional advice. Intellectual property laws and registration requirements vary between jurisdictions and may change over time. Specific professional advice should be obtained based on the facts and circumstances of each case.