Knott Investments Pty Ltd v Winnebago Industries, Inc  FCAFC 59 (7 June 2013)
Partly successful appeal by Knott going to the relief granted to Winnebago.
By way of background, Winnebago carried on business in the USA and other countries (but not Australia), manufacturing and selling recreational vehicles. From either 1978 or 1982, Knott began manufacturing and selling recreational vehicles in Australia using the Winnebago name and logo. Knott also obtained a registration for the Winnebago logo in 1997. Winnebago found out about this activity in 1985, but did not take any action until 1991 and subsequently entered into a settlement agreement with Knott in 1992. Importantly, that agreement reserved Winnebago’s rights. In 2010 (some 25 years after having first become aware of Knott’s activities), Winnebago demanded Knott to cease using the name and logo.
The trial judge considered the relevant date of the wrongful conduct by Knott was to be assessed as at 1982 and, at that date, Winnebago had established a sufficient spill over reputation in Australia to sustain causes of action for passing off and misleading or deceptive conduct. Winnebago was not prevented from pursuing its claims for relief by estoppel or laches, acquiescence or delay. The trial judge made orders for removal of Knott’s trade mark registration and permanently restraining Knott from using Winnebago and associated W logos.
The Full Court on appeal held that the relevant date on which the causes of action arose was 1978 (not 1982) but, at that time there was sufficient spill over reputation of Winnebago in Australia and did not overturn the trail judges conclusions.
The Full Court also agreed with the trial judge that the settlement agreement did not grant permission to Knott to use the Winnebago name in Australia and there was no estoppel.
Knott did not press laches, acquiescence or delay at trial and could not properly pursue these equitable concepts as a defence on appeal. However, Winnebago’s delay was relevant to the question of relief.
The Full Court considered it would be unjust to permanently restrain Knott from using the Winnebago name given the fact that Knott had built its business while Winnebago had not interfered for 25 years. It was appropriate for orders to be made such that Knott could continue trading provided there were disclaimers drawing a clear distinction between Knott’s business and that of Winnebago.
However, the Full Court agreed with the trial judge that Knott’s trade mark registration was obtained contrary to the settlement agreement and should be removed.
The orders subsequently made by the Full Court as to the form of disclaimers required to be given by Knott when continuing to use the Winnebago name and logo are set out in Knott Investments Pty Ltd v Winnebago Industries, Inc (No 2)  FCAFC 117.
Incidentally. Knott and Winnebago have pending trade mark applications for WINNEBAGO. Presumably Winnebago will ultimately prevail and secure trade mark registrations. It remains to be seen whether Winnebago will then pursue an infringement action.