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What’s in a Name? Everything if it’s Winnebago

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By: Nicholas Harrison, Lawyer, Mason Sier Turnbull Lawyers

A recent Federal Court decision drives home the need to steer clear of branding associated with well-known overseas products.

The American manufacturer of the world-famous Winnebago motor home has, after a 20-year delay, successfully enforced its intellectual property rights against Australian company Knott Investments Pty Ltd (Knott). The Federal Court has ordered that Knott – which has manufactured ‘Winnebago’ motor homes in Australia for three decades – must now rebrand its business and vehicles.

The decision will also affect several dealerships Australia-wide that Knott contracted to distribute and sell its ‘Winnebago’ motor homes.

The Winnebago story

American company Winnebago Industries Inc. (Winnebago) has manufactured Winnebago motor homes since 1959.

Between 1978 and 1982, Knott began manufacturing Recreational Vehicles (RVs) in Australia under the ‘Winnebago’ name. Although aware of this, Winnebago had no contact with Knott until 1991, when it contacted Knott to object to its use of the Winnebago name. In response, Knott agreed it would not seek to register Winnebago’s trade marks in any country, nor use them in any country except Australia. Knott also agreed not to associate itself with Winnebago.

Despite the agreement, Knott applied for, and secured, registration of the Winnebago trade mark in Australia, and continued to manufacture RVs under the ‘Winnebago’ mark.

Finally, in 2010, Winnebago commenced proceedings in the Federal Court of Australia against Knott and a number of other respondents, being Knott’s dealers.

What the Court found

Justice Lindsay Foster’s decision, handed down on 25 July 2012, found that Winnebago was entitled to relief against Knott’s actions. Justice Foster said that Winnebago’s reputation in Australia during the 1980s was such that Knott’s use of the ‘Winnebago’ mark amounted to ‘passing off’, and misleading and deceptive conduct. His Honour found that the delay between the 1992 agreement and the bringing of an action in 2010 did not affect Winnebago’s entitlement to enforce its rights.

Accordingly, Justice Foster found that Winnebago was entitled to non-pecuniary relief, in the form of an injunction against Knott using the Winnebago mark. Under the circumstances, His Honour suspended the injunction to allow Knott to “rebrand their business in the most efficient and economical way”. The Winnebago trade mark registration that Knott holds is also to be removed from the Trade Marks Register.

What the finding means

This case demonstrates that a well-known international company’s intellectual property may be protected in Australia even if the company delays enforcing its intellectual property rights.

Although Justice Foster stressed that there were special circumstances in the Winnebago case, companies and individuals should not adopt trade marks or names of well-known foreign businesses without express permission. This includes copying logos or attempting to associate the Australian business with the overseas business.

For advice about protecting and enforcing your intellectual property rights, contact MST’s Intellectual Property Team on +61 3 8540 0200.