November 9, 2012

Foreign Trademarks and Branding Your Business

After an almost 25-year delay, the US Manufacturer of Winnebago motor homes successfully enforced its intellectual property rights against an Australian company, Knott Investments Pty Ltd (“Knott”).

WINNEBAGO IN THE UNITED STATES

 Winnebago Industries Inc (“Winnebago”) has traded under the Winnebago brand since 1959, manufacturing and selling its famous motor homes.  Since then, Winnebago has expanded into the United Kingdom, Europe and Canada.  On a trip to the US, the director of Knott encountered Winnebago motor homes, and from 1982 onwards, Knott began manufacturing and selling motor homes in Australia under the Winnebago name and mark.

KNOTT AND WINNEBAGO

 Winnebago became aware of Knott’s use of its intellectual property in 1985.  Winnebago sought legal advice at the time, but concluded that nothing could be done to stop Knott using its trademark.  In 1991, Winnebago made further attempts to stop the use of the trademark, which resulted in a settlement agreement between the parties.

The agreement provided that Knott could not:

  • use the Winnebago trade marks in any country other than Australia;
  • apply for registration of the Winnebago trade marks in any country; and
  • associate itself with Winnebago or its products.

Despite the agreement, Knott became the registered owner of the Winnebago trademark in Australia in 1997.  In 2010, Winnebago commenced proceedings against Knott in the Federal Court of Australia.

FINDINGS

Justice Lindsay Foster found that Knott hijacked the Winnebago mark “in a bold attempt to pre-empt Winnebago’s opening its doors [in Australia]”.  The court ruled that Winnebago was entitled to relief, and that Knott’s use of the trademark amounted to “passing off”, and misleading and deceptive conduct.

Justice Foster found that Winnebago was entitled to non-pecuniary relief in the form of an injunction stopping Knott Industries from using the Winnebago mark.  The injunction was suspended to allow Knott industries to “rebrand their business in the most efficient and economical way”.  The trade mark registration of Winnebago held by Knott was also removed from the register.

TAKEAWAY

The case underscores the fact that foreign companies will be able to prevent businesses in Australia from trading on their reputation, where reputation in the Australian market can be established and the intellectual property is used without express permission.