We’re joined today by Chris Round, who’s a Partner in the Intellectual Property Group at Middletons and joins us from Melbourne, Chris welcome to BRR Media.

Thank you very much for having me.

Well Chris the famous US Winnebago brand has successfully bought an action against an Australian RV provider, who has found to have engaged in passing off and misleading and deceptive conduct.  What happened here?

What happened was very interesting, the Australian company operated under the Winnebago name and logo for more than 25 years before being found to have engaged in passing off and misleading and deceptive conduct.  The Winnebago company in the USA began trading as long ago as the 1950s, and the Australian company began in either 1978 or 1982, its director Bruce Binns went to the USA, saw Winnebago vehicles or RVs on the road and came back and adopted the name and began making Winnebago products in Australia.  He also published advertisements that included a statement “You’d expect nothing less from Winnebago the world’s most respected name in luxury motorhomes”.  So in finding that Winnebago was entitled to an injunction restraining Knott, which was the Australian company from using the name the Federal Court found that a substantial number of Australians looking to rent or buy RVs would be aware of the Winnebago name, even as far back as 1982 when he adopted the name.  So as a result the court said that Australian consumers would be likely to be deceived into thinking that Knott was associated with Winnebago and that Knott’s RVs were made by Winnebago.

Well Chris interestingly Winnebago sought advice on the misuse of their brand in the 80s, why did it take them so long to bring an action against the Australian provider?

It would appear that they took so long because they did not wish to trade in Australia and as we all know we are a long way from the big US market and we would be a small part of Winnebago’s global business, they also have a business in North Canada, Mexico and in Europe, it said in the judgement, it would appear that they became aware of it and then they decided not to spend the money to conduct the litigation.  They had some discussions with Mr Binns in 1991 and an agreement was entered into where he said he would not register any trade marks for Winnebago, and he would not trade outside Australia.  He then did register a trade mark in Australia for Winnebago and finally by 2010 Winnebago decided it wanted to enter the Australian market place and that’s when the litigation commenced.  So it took them 30 years, but they finally kicked off the action in 2010.

Well as you’ve mentioned Winnebago were ultimately successful, but wouldn’t this kind of delay you know we’re talking about a 30 years period, wouldn’t this generally prevent a successful action being bought by a company in this regard?

Definitely.  Usually delay is a factor, it would be fatal to an application for an interlocutory injunction if Winnebago was to try and have the Australian company immediately stopped they would – the delay would’ve been fatal.  But in this case the judge was very influenced by his impression of the director, Mr Binns, and he made some very critical findings about him, under cross examination and in the judgement stated that he lacked credibility.  So I think that in making the decision the judge had those things in his mind and also weighed up the 30 years and decided that what Winnebago had done in waiting so long should not be fatal to the action because Mr Binns he found had passed off their use and reputation, or their good will and reputation.  Now that advertisement that I mentioned before where Mr Binns was associating his company with the US company, obviously was playing in the judge’s mind and he decided the delay was less important to him than making the ultimate decision that the Australian company should be restrained.

Yep and Chris just finally lots of interesting points pulled out of this case, but what do you think the key lessons for business that they should really be taking from the decision?

Look I think it remains a risk in Australia to adopt the name and trade mark of a well-known overseas business, even if that business is not traded under that name in Australia.  I think it’s particularly true if the logo and the type of business are going to be copied, and especially if then advertisements are going to be published suggesting an association with that overseas business.  On the flip side foreign companies can be reassured that they’ll be able to prevent Australian businesses from using and registering their trade marks in Australia, so I think that’s the lesson, those are the three key points from the judgement.  Usually these cases come about where a foreign company identifies the Australian company within one or two years and quickly jumps on it, this case has shown us that even if it’s quite a long period, 30 years, the courts will still protect the interests of the foreign company.

So you’re not necessarily going to get away with it, even if it has been that long?

Yeah exactly right.

Well Chris some interesting insights there and some good tips for business I think.  Thank you so much for joining us today.

No a problem, thank you very much for having me.

That was Chris Round, he’s a Partner in the Intellectual Property Group at Middletons.  Now listeners if you have any questions for Chris please send them through either using the panel that appears on your screen or of course via email to law@brrmedia.com.