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Winnebago Industries, Inc (Winnebago) is a popular American manufacturer of motor homes (commonly known as RVs in the US). Knott Investments (Knott) had been using the Winnebago name to manufacture motor homes in Australia since 1982 without any official endorsement from the American company.
The Federal Court recently held in Winnebago v Knott Investments that Knott Investments had breached a number of laws by using the Winnebago brand name in the way it did. The Court has ordered Knott to rebrand its products with a different brand name.
The facts
Winnebago began manufacturing RVs in the US in 1966 for the American market. It has since exported RVs to other countries around the world, but has never exported any products to Australia.
Bruce Binns, principal of Knott, began manufacturing RVs in Australia in the mid 1960s. In 1982, Knott started using the Winnebago name on its own RVs. Not only was the name itself used on Knott's motor homes, but the Winnebago logo was also copied. Knott also represented in some advertising material that its products were related to products of the American company.
Passing off
Justice Foster held that Knott's actions amounted to passing off, as Knott was using the reputation of the Winnebago brand name to sell its own goods in Australia.
The contentious element was whether Winnebago had a sufficient reputation in Australia when Knott started manufacturing motor homes using the name in 1982. (If Winnebago did not have sufficient reputation in Australia, then it would not have been passing off for Knott to use the same brand name and logo.) At that time, Winnebago did not sell any products in Australia, nor did it conduct any advertising in Australia. Nonetheless, it was held that even in 1982, enough Australians would have been aware of Winnebago from their overseas travels that there would be at least some reputation in the Winnebago brand in Australia.
Further, the fact that Knott had chosen Winnebago as its own brand name indicated that it did, in fact, want to trade off the back of the American company's reputation. Under cross examination, Mr Binns claimed (somewhat incredulously) that he chose the name 'Winnebago' for his company's products because two other names (Fleetwood and Coachmen) were already being used in Australia by other companies manufacturing motor homes, and Winnebago was the only remaining name he could think of.
The Court ultimately rejected this evidence, and held that the only credible reason why Mr Binns would have chosen the Winnebago name was to appropriate the reputation of the American brand, to the extent that this reputation existed in Australia. Justice Foster found that, '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. In the meantime, he and Knott would be able to trade off its reputation.'
Trade marks
In 1973, Winnebago tried to register the Winnebago logo as a trade mark in Australia. The application was refused on the grounds that a geographic name could not be registered as a trade mark. However, in 1997, Knott succeeded in registering the trade mark, as the way in which the examiner applied the Trade Marks Act had changed.
Under section 88 of the Trade Marks Act, this registration could be removed because the use of the trade mark was contrary to law. In the present case, the use of the trade mark amounted to passing off, so the Federal Court ordered that Knott's trade mark be removed from the register.
CopyrightAlthough Winnebago tried to claim that the brand name was protected by copyright, this ground was rejected by the Court. A single word or a short phrase will almost never attract copyright protection. Further, although the logo itself was drawn in a stylised way, it was mainly comprised of elements made from existing typefaces.
Lessons
At first glance, it would seem that this was a fairly clear cut case of appropriation of a famous overseas brand name. However, the fact that this case ended in costly litigation holds some lessons.
The case hinged largely on the evidence of Winnebago's Australian reputation in 1982, when Knott first used the brand name. 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.
Similarly, Winnebago could potentially have more vigorously opposed Knott's 1997 application for the Winnebago trade mark.
However, a problem for Winnebago is that it would need to actually sell products in order to sustain a trade mark 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.
Ultimately, this case highlights the difficulty of maintaining and defending brand reputation in a jurisdiction where a company is not active.
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