Last week Australia’s Full Federal Court handed down a judgment negating a previous decision to ban Knott Investments Pty Ltd from using the Winnebago brand name.
According to an analysis by the Association of Corporate Counsel, it will have significant implications for the way brand owners think about protecting their brands in Australia. “The decision illustrates the weaknesses in seeking to protect brands without trade mark registrations and how even a successful claim may not result in clear protection of an unregistered brand, particularly where there is delay,” the publication stated.
The case was brought by Winnebago Industries Inc., the well-known U.S.-based RV builder, against Australian-based Knott, that had adopted and used the Winnebago brand in Australia.
Knott went on to use the brand for over 25 years until legal proceedings were filed by Winnebago for passing off and contraventions of the Australian Consumer Law. Winnebago opted not to take action because it had not decided to expand its business to Australia at the time. Subsequently the parties entered into an agreement to preserve their positions pending any future litigation.
The trial judge found that Knott had deliberately adopted the Winnebago brand, following a visit to the U.S. to take advantage of Winnebago’s reputation. There was also a finding that Winnebago had a sufficient reputation in Australia to bring an action for passing off to restrain the use of the Winnebago brand.
The judge granted an injunction preventing Knott from using the Winnebago mark and ordered that Knott’s registered trade mark be canceled (as well as other associated non-pecuniary relief).
Knott appealed, claiming among other things that relief should be limited because of Winnebago’s delay in bringing the action. The Full Federal Court allowed the appeal and in a second judgment imposed its own formulation of relief, in more limited terms than the relief ordered by the trial judge.
The Full Court highlighted the fundamental difference between a claim for trade mark infringement and claims for passing off and misleading or deceptive conduct. Whereas the former is directed to preventing confusion about trade origin, the latter is directed at whether members of the public are likely to be misled. This more limited enquiry frames the way in which the Court will approach relief.
The court decided to allow Knott to use the Winnebago mark, as long as a clear and prominent disclaimer was used near the mark, making clear that the two businesses were not associated. The court drafted the terms of the disclaimer. Knott was also ordered to require purchasers or hirers of its products to sign a disclaimer acknowledging that there was no association between the businesses.
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