When is a Winnebago Not a Winnebago?
06 September 2012
An Australian company using the Winnebago name and logo for more than two decades has been found guilty of passing off and misleading and deceptive conduct by the Federal Court of Australia.
The court ruled that Sydney businessman Bruce Binns “intentionally hijacked” the well-known US recreational vehicle brand “in a bold attempt to pre-empt Winnebago’s opening its doors here.”
Winnebago Industries of Forest City, Iowa, has been making recreational vehicles in the US since 1966; Binns’ company, Knott Investments, began making similar RVs in Sydney as early as 1982. Binns marketed the vehicles as Winnebagos and used a logo similar to that of the US company.
Justice Lindsay Foster said Binns traded on the US company’s reputation for decades.
“No doubt Bruce Binns thought that, by taking such action, he could keep Winnebago out of Australia or, at the very least, hold it to ransom and extort a significant payment from Winnebago,” he said.
Lawyers at Minter Ellison, writing on the firm’s IP blog, note that in 1973, Winnebago tried to register the Winnebago logo as a trademark in Australia. “The application was refused on the grounds that a geographic name could not be registered as a trademark,” the firm said. “However, in 1997, Knott succeeded in registering the trademark, as the way in which the examiner applied the Trade Marks Act had changed.”
Minter Ellison lawyers said that under Section 88 of the Trade Marks Act, this registration could be removed because the use of the trademark was contrary to law. In the present case, the use of the trademark amounted to passing off, so the Federal Court ordered that Knott’s trademark be removed from the register.
The US manufacturer did not launch legal action against Binns until 2010, when it alleged that Binns and 11 dealers misled consumers to believe that Australian-made Winnebagos were made under licence from – or at least with the approval of – the Iowabased company.
“The case hinged largely on the evidence of Winnebago’s Australian reputation in 1982, when Knott first used the brand name,” Minter Ellison lawyers said. “Although Winnebago would certainly be said to have a reputation now, its status in 1982 was far less clear. Earlier action against Knott may have saved Winnebago the trouble of having to find evidence about its reputation dating back 30 years.”
However, they said, a problem for Winnebago is that it would need to actually sell products in order to sustain a trademark registration – and it cited the fact that it did not want to export its products to Australia as a key reason why it did not take decisive action against Knott earlier. “Therefore Winnebago faced a rather difficult problem: on the one hand, it faced evidential issues because it had waited so long to pursue Knott over the appropriation of its brand; but on the other hand, its ability to obtain rights itself was weakened by the fact that it was not actively selling its products in Australia,” the lawyers wrote.
Foster has ordered the cancellation of the Winnebago trademark in Australia. Corrs Chambers Westgarth advised Winnebago Industries, while Knott Investments was represented by King & Wood Mallesons.
