Knott Investments Pty Ltd v Winnebago Industries, Inc

Federal Court of Australia (Full Court)|2013-06-07|Before: Allsop CJ, Cowdroy J, Jagot J

A 490 (1989) 17 IPR 289 approved Turner v General Motors (Australia) Pty Ltd [1929] HCA 22 42 CLR 352 applied Waltons Stores (Interstate) Ltd v Maher [1988] HCA 7 164 CLR 387 referred to Western Australian Insurance Co Ltd v Dayton (1924) 35 CLR 355 referred to Winnebago Industries, Inc v Knott Investments Pty Ltd (No 2) [2012] FCA 785 varied World Series Cricket Pty Ltd v Parish (1977) 16 ALR 181 approved

Counsel for the Appellants: A Bannon SC and P Flynn

Solicitor for the Appellants: King & Wood Mallesons

Counsel for the Respondent: I Jackman SC and M Darke

Solicitor for the Respondent: Corrs Chambers Westgarth

IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 1417 of 2012

SYDNEY CAMPERVAN & MOTORHOME RV CENTRE PTY LTD (ACN 112 316 560)

BRISBANE RV'S CARAVANS AND CAMPERS PTY LTD (ACN 102 806 520)

JUDGES: ALLSOP CJ, COWDROY J and JAGOT J DATE OF ORDER: 7 June 2013 WHERE MADE: SYDNEY

Appeal allowed.
Set aside Orders 1, 3, 5, 6, 9, 10 and 11 made on 6 September 2012.
Within 21 days the parties exchange submissions on the orders that should be made, including draft orders, and within 28 days the parties file and serve further submissions on orders and any draft proposed orders. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011 (Cth).

IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 1417 of 2012

SYDNEY CAMPERVAN & MOTORHOME RV CENTRE PTY LTD (ACN 112 316 560)

BRISBANE RV'S CARAVANS AND CAMPERS PTY LTD (ACN 102 806 520)

A & K CARAVANS AND MOTOR HOMES PTY LTD (ACN 100 888 748)

JUDGES: ALLSOP CJ, COWDROY J and JAGOT J DATE: 7 June 2013 PLACE: SYDNEY

ALLSOP CJ: 1 Knott Investments Pty Limited (Knott) and various other companies appeal against orders made by a judge of the Court permanently restraining them from using the name "Winnebago" and associated logos of "W" in connection with the manufacture, promotion or sale of recreational vehicles, and against associated orders, including the removal from the Register of Trade Marks of Mark No 729,781 in Knott's name. 2 The broad facts are that prior to 1978, and from approximately 1959, the applicant company, Winnebago Industries, Inc (Winnebago), a United States corporation, had carried on business in the United States, and in a number of other countries in the world, including the United Kingdom and Canada (but not Australia), manufacturing and selling recreational vehicles, such as motor homes and trailers. After 1978, Winnebago exported its recreational vehicles to Europe and other countries. From either 1978 or 1982, Mr Bruce Binns (the principal of Knott) and Mrs Binns, or Knott began manufacturing and selling recreational vehicles in Australia using the Winnebago name and logo in a form substantially identical to Winnebago's use in the United States and elsewhere. Mr Binns had seen the name and logo while in the United States in the 1960s. Mr Binns' and Knott's use was without the knowledge (initially) or permission of Winnebago. Winnebago found out about the use of the name in Australia in 1985. Although Winnebago's executives considered this a blatant infringement of Winnebago's rights, nothing was done to stop the use, at least until 1991, when discussions took place between Winnebago and Knott, the content and effect of which was in dispute. A document entitled "Settlement Agreement" was entered into in 1992, the effect of which was in dispute. Knott asserted that the Settlement Agreement (in the context of conversations said to have taken place between Mr Binns and Winnebago's founder, Mr John K Hanson) permitted Knott to use the name in Australia or that it represented that it could use the name in Australia. Winnebago asserted that the effect of the Settlement Agreement was as a "standstill agreement", reserving its rights, holding the position and putting Knott on notice of Winnebago's claims. In any event, it was not until 2010, 25 years after knowledge of use commenced, that Winnebago made demand upon Knott to cease using the name and logo. 3 These broad facts threw up the following issues relevant to the appeal: (a) What was the relevant date of the allegedly wrongful conduct, at which time the reputation of Winnebago in Australia was to be assessed: 1978 or 1982? The primary judge said, 1982. (b) At such date, did Winnebago have sufficient reputation in Australia to sustain causes of action for passing off or misleading or deceptive conduct? The primary judge said, yes. (c) Did Winnebago consent to Knott using the name and logo in Australia, either by conversations in 1991 or the Settlement Agreement in 1992? The primary judge said, no. (d) Is Winnebago prevented from pursuing its claims for relief by estoppel or laches, acquiescence and delay? The primary judge said, no. (e) Did Knott breach the Settlement Agreement? The primary judge did not answer this directly. (f) Are Winnebago's claims for relief out of time? The primary judge said, no. (g) Should the Trade Marks Register be rectified by the cancellation and removal of Knott's Australian mark? The primary judge said, yes. 4 In addition to the above issues that derive from the structure of the primary judge's reasons, the appeal raised the questions of the effect of the development of an Australian reputation by the appellant on any reputation of Winnebago that may have existed in 1978 or 1982 and, on that hypothesis, of the concurrent use of the name and marks. These questions go primarily to the proper form of relief, if any. 5 The essential propositions put by the appellants (Knott and various companies associated with Knott, whether in interest or in business) in support of the appeal were as follows: (a) At the relevant date of commencement of trading (whether 1978 or 1982) Winnebago did not prove any, or any sufficient, reputation in Australia. (b) If Winnebago did possess some reputation at the relevant date, by 2003 such reputation had been rendered not actionable by Knott's prior use and associated reputation. (c) The years of prior use with the knowledge of Winnebago, together with the Settlement Agreement, gave rise to defences of estoppel, acquiescence and delay. (d) The circumstances (in particular the matters underpinning (b) and (c) above, were such as to give rise to the discretionary refusal of injunctive relief and trade marks cancellation, or, at the least, were such as to limit relief to conduct in the absence of a disclaimer by Knott. 6 For the reasons expressed below, I would reject the submissions of the appellants, with the exception of the last question as to the appropriate form of relief. The appeal should be allowed and the relief varied, although the parties should be heard on the form of relief.

The relevant date to assess the reputation in Australia of Winnebago 7 The primary judge dealt with this issue at [30]-[31] of the reasons, as follows: 30 There is no dispute that, since May or early June 1982, Knott has used the Winnebago marks in connection with the sale, promotion and advertising for sale in Australia of RVs manufactured by it in Australia. The respondents contend that Bruce Binns used the Winnebago marks in connection with a business conducted by him and his wife from late March 1978 until May or June 1982 and that Knott should get the benefit of such use. However, there was no evidence of a sale or transfer of any business by Mr and Mrs Binns to Knott in 1982. The registered business name "Winnebago Industries" was transferred at that time but there was no evidence of any other relevant transaction. Mr and Mrs Binns, whether considered together or individually, have a legal personality which is separate from that of Knott. 31 In those circumstances, I find that the allegedly infringing conduct on the part of Knott commenced in early June 1982 when the business name "Winnebago Industries" was transferred to it. 8 The relevant evidence of Mr Binns (affidavit of 25 February 2011), which was not in contest, was to the following effect. In 1963 and 1964, he travelled around the United States as a young man. He observed large numbers of motor homes or recreational vehicles on the road in the United States. He observed the names Winnebago, Fleetwood and Coachmen. Shortly after his return, Mr Binns, a carpenter by trade, began manufacturing recreational vehicles. He branded the vehicles he first made (being utilities with slide on cabins) "Freeway". In 1967, he incorporated Knott as a family company to acquire property on which to build the recreational vehicles. Property was purchased on which a factory was built by another company of Mr Binns, Bruce A Binns Pty Limited. This company, which changed its name to Freeway Camper Company Pty Limited in 1975, manufactured and sold recreational vehicles using the name "Freeway" until 1977, when the company was wound up after creditors had appointed a receiver. After this, from early 1978, Mr Binns (together with his wife) began to manufacture and sell recreational vehicles without the interposition of a company. He considered using one of the names he had seen in the United States. He knew that the names "Fleetwood" and "Coachman" were being used in Australia. He enquired about "Winnebago". The name "Winnebago Industries" was already registered as a business name in Victoria. He purchased the name for $475. The person in whose name it was registered had not used it. On 29 March 1978, the business name "Winnebago Industries" was registered by Mr Binns in New South Wales. Mr Binns and his wife used the name "Winnebago Industries" in the business; they were the lessees of the factory premises used to manufacture the vehicles. It can be inferred that they carried on the business in a family partnership. Mr Binns gave evidence in his affidavit that in May 1982, "my wife and I transferred the registered business name Winnebago Industries to Knott". Mr Binns said that there was no written agreement or document regarding the transfer of the business. Knott is (and by inference was) the trustee of a family trust for Mr and Mrs Binns and their family. It was common ground that from May 1982, Knott conducted the business of manufacturing and selling recreational vehicles carrying the Winnebago logo. From June 1982 the logo was affixed to vehicles; the evidence supported the inference that after May 1982, Mr and Mrs Binns did not carry on the business of manufacturing and selling recreational vehicles. 9 The above evidence supports the clearly available, indeed compelling, inference that a transfer of the business that had been carried on by Mr and Mrs Binns was made informally to the trustee of their family's trust, that is, to Knott. The date to assess the offending conduct was 1978. 10 Ground 3 of the Notice of Appeal is therefore made good.

The reputation of Winnebago in Australia in 1978 11 The primary judge made no findings on the subject of Winnebago's reputation in Australia in 1978. The primary judge's principal finding as to Winnebago's reputation in 1982 was expressed at [130] of the reasons that: …a substantial number of potential customers looking to buy or rent RVs in Australia were aware of Winnebago and its RVs as at 1 June 1982 with the consequence that such persons were likely to be deceived thereafter into thinking that the business conducted by Knott by or under the Winnebago name was truly the business of Winnebago and that the RVs manufactured in Australia by Knott were RVs manufactured by Winnebago. 12 The Notice of Contention, filed in Court at the hearing of the appeal, sought to support the judgment of the Court on the ground that the primary judge should have found that Winnebago's reputation in 1978 was sufficient to found its causes of action for passing off and contraventions based on the Trade Practices Act 1974 (Cth), ss 52 and 53(c) and (d), and the Competition and Consumer Act 2010 (Cth), Sch 2 (The Australian Consumer Law), ss 18 and 29(1)(g). 13 For present purposes, it is sufficient to analyse whether, as at the date of the commencement of the conduct said to be unlawful (1978), Winnebago had a reputation in Australia sufficient to found a passing-off claim and a claim under the relevant provisions of the Trade Practices Act. 14 Both sides approached that question by reference to the principles in ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302, as did the primary judge. There was no substantive dispute about the content of the governing principle; rather, the contest was a factual one as to what the evidence revealed. In these circumstances, the principles can be explained simply by reference to what was said in ConAgra 33 FCR 302. From ConAgra 33 FCR 302, it can be taken that an applicant need not have conducted business in Australia to support a passing off claim. Proof of relevant reputation in Australia will suffice. What is required is proof of a substantial number of persons (whether residents or visitors) who were aware of the applicant's product and who were thus potential customers. Such persons represent, in a real sense, a commercial advantage available to be turned to account were the applicant to commence business: ConAgra 33 FCR 302 at 346 (Lockhart J), at 372 (Gummow J) and at 377 (French J). The size and extent of the class of such potential customers may vary according to the circumstances of the case and will be measured by reference to the relevant group or section of the public likely to be potential customers. Here, such persons would be prospective buyers, hirers or users of recreational vehicles, being the class of persons who would be likely customers, whether direct or indirect. The relevance and importance of there being a substantial number flows from the need to show real damage by the deception caused by the respondent's conduct. 15 The primary judge's conclusion at [130] set out above was attacked, not merely by reference to the date of assessment, but by reference to the evidence which did not, it was submitted, support the conclusion that a substantial number of potential customers existed in 1978. In dealing with this attack on the primary judge's conclusion, it is convenient to deal with the claim in the Notice of Contention that sufficient reputation existed in 1978. 16 It will be necessary, in due course, to say something of Winnebago's reputation after 1978, but for present purposes, the reputation as at 1978 is the relevant enquiry. 17 The primary judge commenced with Winnebago's reputation in the United States and overseas; then how that reputation "spilled over" into Australia; and then the Australia-specific reputation evidence. That is how the respondent sought to have the finding made as at 1978. 18 The primary judge dealt with the United States' and overseas reputation at [48]-[60] of the reasons. There was no challenge on appeal to any of these findings. From the primary judge's finding as to the period up to 1978, it can be said that Winnebago, having commenced business in the 1950s, was a significant producer of recreational vehicles and a listed company on the New York Stock Exchange. It had advertised its vehicles extensively, in print media, radio, television and trade shows. The advertising was across the whole of the United States and was uninterrupted from at least 1971. The vehicles were placed in a film called Escape to Witch Mountain in 1975. From the late 1960s, Winnebago and its recreational vehicle featured in many articles and opinion pieces in The New York Times, The Wall Street Journal, The Washington Post, The Los Angeles Times, The Chicago Tribune, The Times, Time Magazine and Popular Science. From 1969, Winnebago had a rental franchise and a significant dealership network. Winnebago was the official provider of motor homes for the 1974 World Fair in Washington State. In 1977, Winnebago established a "fly-drive" motor home rental program for foreign visitors to the United States and Canada. It exported vehicles to Canada and the United Kingdom from 1971. 19 The evidence also included the following. The dealer network of Winnebago by the mid-1960s covered every mainland State of the United States. By 1977, Winnebago manufactured its 100,000th motor home. It advertised in recreational vehicle publications and in national magazines in the United States such as Time, Better Homes and Gardens and National Geographic. It advertised locally and nationally on television in the United States from 1971. Winnebago began selling recreational vehicles in the United Kingdom and Canada in 1971. By August 1978, the annual value of sales of all recreational vehicles by Winnebago was nearly USD 224 million. 20 At [124] of the reasons, the primary judge said the following about Winnebago's foreign reputation: There is no doubt that Winnebago's reputation in North America, in the UK and in Europe is significant, favourable and of long-duration. It has developed substantial goodwill in its business. Those remarks were apposite even as long ago as 1 June 1982. 21 There was no challenge on appeal to this finding. On the evidence and the primary judge's findings, the same can be said as at 1978, at least as to North America and the United Kingdom. 22 The primary judge dealt with spillover reputation at [61]-[70] of the reasons. Winnebago had never advertised in Australia or exported vehicles to Australia. The primary judge accepted that many Australians travelled to the United States, the United Kingdom and Europe from the 1960s and it was "inevitable…that Australians would have become aware of Winnebago and Winnebago RVs during the course of their travels": [62] of the reasons. At [63] the primary judge made the point that the relevant section of the public was comprised of those people who wish: … to spend their leisure time travelling around Australia or other countries in mobile motorhomes rather than doing so in conventional motor vehicles or by train or by aircraft with the necessary concomitant need to spend their evenings in fixed accommodation such as hotels, motels and boarding houses and those persons wishing to carry on business as manufacturers, sellers or rental providers of RVs. 23 In this context, there was particular evidence from the distributor of vehicles in the United Kingdom, Mr Wilson. In the early 1970s, his business advertised motor home rental holidays in the United Kingdom and Europe to Australians. These advertisements were placed in a magazine published in Australia called Australian Caravan World, in The Age newspaper and other publications. In at least some of those advertisements, Winnebago vehicles were shown. The business hired out "Winnebago" vehicles from its seven locations in the United Kingdom. 24 At [68] of the reasons, the primary judge referred to the evidence of the numbers of people who travelled between Australia and countries in which Winnebago had a considerable presence: Between 1958 and 1978, 536,849 Australian residents travelled to the USA and 789,289 people travelled from the USA to Australia. Between 1971 and 1978, 660,939 Australian residents travelled to the UK and to Ireland while 842,920 people travelled from the UK and Ireland to Australia. 25 On the appeal, the respondent referred to the affidavit evidence of Wen Hui Wu dealing with similar but more detailed figures which revealed a significant increase in tourist travel in the 1970s. The respondent also stressed (legitimately so) the fact that Winnebago vehicles were intimately related to a certain class of tourism. It was not just a case of Australians travelling to places where a particular product existed. 26 Mr Binns himself was the personification of knowledge about Winnebago that could be picked up by a traveller. The primary judge referred to this at [70] of the reasons: Bruce Binns himself first encountered Winnebago RVs in the USA in 1963 and 1964 when he visited there as a tourist. He said that, although he had no connection with the RV industry at the time, he had noticed and remembered the products and branding of Winnebago. 27 In cross-examination on this topic, Mr Binns said that he saw quite a few Winnebago vehicles when he was in the United States. It was one of many brand names that stuck in his mind. His evidence permitted the inference that the Winnebago vehicles made more of an impression on him during his first visit to the United States in the 1960s, when he was not making such vehicles, than in 1974, when he was. 28 The primary judge also referred to international publications in which Winnebago's recreational vehicles "appeared or were referred to" that were available in Australia. These publications were: The New York Times, The Wall Street Journal, The Washington Post, Time Magazine, Popular Science, The Times, National Geographic. There was no evidence of circulation figures of these publications. Each was held in the State Library of New South Wales. At [66] of the reasons, the primary judge said: In all of the publications, there are references to Winnebago and Winnebago RVs prior to late March or early April 1978. There was no evidence before me as to the level of access exercised by members of the public in New South Wales to those publications at the NSW State Library. 29 At [125]-[126] of the reasons, the primary judge made findings about the effect of the publications and the travel, as follows: 125 I do not think, in the absence of evidence probative of the degree of access eventually exercised by interested persons, that Winnebago can draw much support for the proposition that it had a sufficient reputation in Australia as at 1 June 1982 from the mere availability of publications in public libraries in Australia. Nonetheless, given the nature of some of those publications (daily newspapers and magazines which were well known and which had substantial penetration in the places where they were published), I am prepared to infer that some visitors to Australia and that some Australian residents who visited foreign countries from time to time in the 20 year period between 1962 and 1982 came into contact with Winnebago's RVs and the business of Winnebago via such publications when published in their places of origin. 126 In addition, some of the visitors to Australia in the period between 1962 and 1982 would have been aware of Winnebago and its RVs as would some Australian residents who travelled overseas. Inevitably, news of Winnebago would have spread in Australia through the conversations and actions of such people in that period. 30 The Australian specific evidence of the use of Winnebago prior to 1978 was scant. At [71]-[72] the primary judge said the following: 71 Unsurprisingly, the evidence of Winnebago and its RVs being specifically referred to in Australia prior to late March 1978 was scant. On 29 October 1977 and again on 3 December 1977, advertisements for the sale of a US manufactured Winnebago RV appeared in The Sydney Morning Herald. In the first of these advertisements, the RV was referred to as a "… Fully imported, American, Winnebago, fully equipped with shower and bath". It was otherwise described in glowing terms. It was advertised for sale by Ray McGuire Motorhome Centre in Cabramatta. In the second of these advertisements, the references were more brief. 72 In the May 1971 edition of a magazine called Australian Caravan World, a photograph of a Winnebago motorhome appeared. It was described as a "Winnebago motorhome (USA)". The same photograph appeared in the February 1972 edition of Australian Caravan World. On this occasion, the photograph appeared in association with some text. The text concerned the business in the UK of Wilsons (UK) which provided motorhomes for rental in the UK and in Europe. In this context, the author said: Now Available in the UK and USA THE WINNEBAGO Motor Home, long a big selling favorite throughout America is currently available through branches of Wilsons in the UK. Australians intending to tour Europe and the UK can hire one of these luxury units for the trip and travel in all possible style and comfort. Interested persons should contact Wilsons of London direct for hire rates and booking information. 31 Mr Binns was asked in cross-examination about the name Winnebago and its recognition here. He said that in 1978 the name "would not have been recognised that much"; but he did accept that people who had travelled to the United States, people in the industry, American tourists in Australia, and people who read the Australian magazine Australian Caravan World would have known of the Winnebago brand. (See transcript 30 May 2011, pp 58 and 59). This is useful evidence of the recognition by Mr Binns of the reality of the recognition of the Winnebago brand in Australia at least amongst those mentioned in those answers. 32 That the perception of the brand in those groups of the public can be taken as the foundation for a sufficiently substantial reputation to warrant the conclusion of the potentiality of damage can be seen by Mr Binns' own conduct and the primary judge's findings in connection therewith. 33 The primary judge dealt with this question in detail at [87]-[98] under the heading "Bruce Binns' Explanation for Choosing the Name Winnebago" and at [128]. In the former section of the judgment, the primary judge examined the answers given by Mr Binns to questioning in cross-examination. Mr Binns undoubtedly copied the Winnebago name and logos. He thought he could do this because Winnebago was not operating in Australia. Mr Binns denied that he wanted to benefit from any association in Australia with the Winnebago brand in the United States. He accepted, however, that he chose the name because it was a respected company in the United States. It was in this context that he was questioned about the groups of persons in Australia who would recognise the brand and reputation. At [92]-[93] of his reasons, the primary judge made the following findings: 92 I think that Bruce Binns well understood and indeed intended that, by adopting the Winnebago name and the Winnebago logos in connection with his business in Australia, he would get the benefit of any reputation which Winnebago and Winnebago RVs had in Australia. I also think that, even as early as 1978, he was of the opinion that there was sufficient awareness amongst the relevant consumers and the trade in Australia of Winnebago, its products and its reputation to make his decision to use the Winnebago marks worthwhile. His decision to do so was clearly not "… commercially irrelevant …". He had just experienced the collapse of the Freeway business and no doubt was keen to ensure that the new business did not suffer the same fate. One way to assist in that endeavour was to attempt to present the new business as an associate of the well-established and highly respected Winnebago. It is apparent from the passage extracted from the evidence of Bruce Binns at [91] above that he had an expectation that there would be, amongst those interested in either purchasing or renting RVs in Australia, a good smattering of persons who were aware of Winnebago and its RVs. He accepted that, in particular, persons who had travelled overseas were likely to have the relevant awareness. 93 I do not find Bruce Binns' earnest denials to the effect that he was not endeavouring to trade off the goodwill and reputation of Winnebago credible. I find that, by choosing to exploit the Winnebago name and the Winnebago logos, he was intending to gain for himself as much benefit as possible in Australia from the goodwill and reputation of Winnebago and its RVs. His decision was motivated by a keen appreciation that he and his associates would gain financial benefit from using the Winnebago marks in Australia. 34 These were findings deeply influenced by the advantage of the primary judge in seeing Mr Binns. It can be accepted that the use of the name he knew to be well-known in the United States could have been prompted by a recognition that it had worked for someone in the United States and might work for him in Australia. This is different from using it to trade off such reputation as existed in Australia of the American brand. The primary judge found the latter. That was in part based on his Honour's assessment of Mr Binns. 35 That assessment of credit in part arose from Mr Binns' answers to an advertisement placed by Knott in Australian Caravan World in 1995. The advertisement was clearly misleading, and expressing a direct relationship with Winnebago. Mr Binns was also cross-examined about presentations to dealers in the 1990s. The primary judge was clearly unimpressed by Mr Binns' credit in answering questions on these matters. It can be accepted that these events, the subject of this questioning, were well after 1978; but they informed the primary judge's attitude to the assessment of Mr Binns' evidence. (They are also relevant to reputation and conduct after 1978, a topic to which I will come in due course.) 36 At [128] of the reasons, the primary judge said the following: The most telling evidence of reputation in Australia is the evidence of Bruce Binns. He intentionally hijacked the Winnebago marks in Australia in a bold attempt to pre-empt Winnebago's opening its doors here. 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. 37 Complaint was made about the use of the word "hijacked", and about the findings as to attempted pre-emption and holding Winnebago to ransom and extorting money from Winnebago. These matters were not put to Mr Binns, and, with respect, the findings cannot be justified. There is, however, no reason to qualify or set aside any aspect of the finding that Mr Binns did intend to trade off such reputation as existed. That he thought it worth doing in 1978 was some evidence of the utility of that course: ConAgra 33 FCR 302 at 345 and cases there cited, and at 377-378. 38 The success of the appellant's challenge to the date of assessment (1978, not 1982) and to some of the findings in [128] does not, however, strike successfully at the primary judge's conclusions about the existence of sufficient reputation of Winnebago in Australia in 1978 to support a conclusion that it would be damaged in a real way by another party using its name. Australian tourists to the United States, United States tourists to Australia, Australian tourists to the United Kingdom seeking to use recreational vehicles, readers of magazines such as Australian Caravan World and those in the industry would have been aware of Winnebago. Mr Binns was so aware on his first visit to the United States. He accepted that these groups would have been aware of the Winnebago reputation. On the primary judge's findings based in part on credit, he set out to take advantage of such reputation as existed of Winnebago in Australia. 39 Thus, there was sufficient reputation in Winnebago in Australia to found a passing off claim and claims for misleading and deceptive conduct under the trade practices legislation in 1978. 40 In the light of this conclusion, the issues referred to at [3(c)-(g)] and [5(b)-(d)] above arise.

The Settlement Agreement in 1992 and estoppel 41 The Settlement Agreement took its place in the history of the dealings between Winnebago and Knott. These are dealt with by the primary judge at [99]-[111]. 42 Winnebago had first become aware of Knott's activities in 1985. It took no step to prevent it using the name Winnebago. The view that nothing would be done was founded on legal advice. (It is unnecessary to explore or speculate on the basis of this advice before the Full Court in ConAgra 33 FCR 302 made it clear, contrary to influential earlier authority, that it was unnecessary to carry on business within Australia to found a passing off action.) Nevertheless, by 1991, Winnebago instructed Australian lawyers to write a letter of demand. Mr Binns visited the United States in 1991. He gave evidence that he spoke to Mr Hanson, the founder of Winnebago and that Mr Hanson said he had no objection to Knott using the name. This was contested. The primary judge concluded it did not occur. The parties communicated through lawyers until September 1992, when the Settlement Agreement was emailed. It is set out at [110] of the reasons. 43 The primary judge rejected the estoppel case put by Knott insofar as it was founded on the consent in the asserted conversation with Mr Hanson. No appeal was brought from that finding. The second basis was the terms of the Settlement Agreement. The primary judge rejected this at [144]-[145] saying: 144 When due consideration is given to the terms of the Settlement Agreement (especially cl 1 and cl 6 thereof), I do not think that the pleaded representation was made by means of the Settlement Agreement. 145 The following observations about the Settlement Agreement may be made: (a) The Settlement Agreement does not contain any release by Winnebago in favour of Knott; (b) The Settlement Agreement does contain a covenant not to sue Knott or Bruce Binns in the USA (but not elsewhere). There is no promise not to sue Bruce Binns or Knott in Australia; (c) Clause 6 makes very clear that it was the parties' intention by the Settlement Agreement to leave matters as they stood as at the date of that Agreement until such time as Winnebago might wish to exercise its rights in respect of the Winnebago marks. Clause 6, properly understood, is a statement for the benefit of Winnebago to the effect that all of its rights as at September 1992 against Knott in respect of the misuse of the Winnebago marks, whether at common law or under statute, were reserved in the sense that whatever rights existed at the time that Agreement was signed remained available to be exercised by Winnebago at a time in the future of its choosing. In my judgment, cl 1 does not detract from this interpretation. All that cl 1 does is place restrictions on the future conduct of Knott in relation to the Winnebago marks by preventing it from using those marks in any country other than Australia and by prohibiting it from applying to register those marks in any country (including Australia). 44 Given its context, I would agree with the primary judge that there is nothing in the agreement that gave permission to use the name in Australia. There was no context or terms by reference to which Winnebago conceded any rights to Knott. The terms of cl 6 were clear: 6. This Agreement does not address, impact upon, or relate in any way, manner or form to the use or ownership of the Proprietary Marks in Australia or to any rights relating to the Proprietary Marks based on reputation or use under any statute or at common law in Australia. By entering into this Agreement, Winnebago does not expressly or impliedly acknowledge that Australian Company has any rights of any nature whatsoever to the Proprietary Marks in Australia. To the extent not expressed in this Agreement, this Agreement shall be without prejudice to the rights of Winnebago and Winnebago expressly reserves all of its legal rights. 45 It may be Knott took commercial comfort from the unwillingness of Winnebago to litigate in Australia. So be it. Knott was aware, however, from the terms of the Settlement Agreement that it had no vested or admitted right to use the name. 46 On appeal, it was submitted that the words of cl 1 carved out Australia from the prohibition. Thus, it was submitted, there was an implicit permission. That construction was correctly rejected by the primary judge. It cannot withstand the terms of cl 6. 47 An alternative construction was propounded on appeal: that Mr Binns and Knott were not prevented from using Winnebago's name and marks in Australia, and that by deliberately doing nothing for another 18 years, Winnebago fostered the assumption of Knott that Knott could use the name and logos, such that it would be unjust to depart from the assumption. The appellant criticised the primary judge for failing to consider this argument. 48 This alternative estoppel agreement should also be rejected. First, there was no clear representation, arising either out of the Settlement Agreement or from the conduct. The terms of the agreement, in their context, contained a degree of commercial ambiguity. The terms, however, of cl 6 could leave no doubt in Mr Binns' mind that any practical confidence in him that Winnebago was not going to sue him was not based on any right conceded by Winnebago. He proceeded at his own risk. The finding by the primary judge at [155] of the reasons (not specifically challenged) that Mr Binns knew there was a risk of having to rebrand his product if Winnebago entered the market is also fatal to the submission. 49 In these circumstances, there can be no estoppel.

Laches, acquiesence and delay 50 On appeal, the appellant also sought to put the matter more broadly than the estoppel case, under the rubric of laches, acquiescence and delay. It was put that Winnebago's entire course of conduct from 1985 was deliberate and informed inaction encouraging a belief in Knott that it could expend money in doing business using the name without opposition. This part of the argument was put as a complete defence. 51 The first, and in my view sufficient, answer to this is that any separate operation for laches, acquiescence and delay outside the estoppel claim (as dealt with above) was expressly disclaimed by Knott in opening addresses and final submissions. Knott responds to this by saying that no new facts are presented and the argument involves only legal characterisation of the facts. Even if that be correct, a proposition unnecessary to explore, it is not a complete answer to the objection. Parties should generally be held to the cases they deliberately and consciously run. It will rarely be in the interests of justice to permit a party on appeal to depart so clearly from a consistent position taken at trial. The principles are sufficiently set out in Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd [2001] FCA 1833; 117 FCR 424 at 439-440 [38] and cases there cited. The matter should not be permitted to be argued beyond the bounds put below on estoppel. 52 In any event, the finding at [155] to which I have already referred, means that it is not possible to say that Mr Binns or Knott was encouraged to believe that their actions were "accepted or not opposed" by Winnebago, or such as would give rise to serious and unfair prejudice if relief were granted, in the sense referred to in Byrnes v Kendle [2011] HCA 26; 243 CLR 253 at 279-280 [79] and 295 [139], so as to amount to a complete defence. 53 Thus, laches, acquiescence and delay should be rejected as a complete defence. Aspects of them, however, will be relevant to the question of relief.

Winnebago's reputation and Knott's use after 1978 54 Whilst, for the reasons set out above, the defence of estoppel (and through it, as run below, laches, acquiescence and delay) should fail, that is not the end of the enquiry into the consequences of the use of the name and logos by Knott for over 30 years, 25 of which was with the knowledge of Winnebago. Knott argued that the "extraordinary delay" (as found by the primary judge at [152] of the reasons) should lead to a discretionary refusal of relief, whether a complete refusal or the granting of more limited injunctive relief based on express disavowal of connection with Winnebago. 55 Before examining relevant aspects of the events and circumstances from 1978 onwards, some preliminary observations should be made, as to operative legal principle and as to the conduct of the hearing below. 56 Final injunctive relief may be refused by reason of delay: Carlton and United Breweries Pty Ltd v Bond Brewing New South Wales Ltd (1987) 76 ALR 633 at 638 (per Bowen CJ, Beaumont J and Foster J). To the extent that any injunctive relief is informed by, or founded upon, the protection of the public by enforcement of the Trade Practices Act or Australian Consumer Law, delay, even serious delay otherwise sufficient in equity to disentitle the applicant to relief, may not have that effect, in that the court will be slower to give effect to delay or like considerations, given the wider public interest, beyond mere private rights: World Series Cricket Pty Ltd v Parish (1977) 16 ALR 181 at 189-190 (Bowen CJ), at 195-196 (Franki J) and at 203-204 (Brennan J) and Associated Minerals Consolidated Limited v Wyong Shire Council [1975] AC 538 at 560. Even if conduct does not disentitle an applicant from relief, it may, in a case based on reputation, such as in a passing off suit or like proceeding, lead to more limited relief. A party that might otherwise be the subject of the order may only be required to distinguish its business from that of the applicant: see Turner v General Motors (Australia) Pty Ltd [1929] HCA 22; 42 CLR 352 at 565-567. This kind of grant of only limited relief may arise (as it did in Turner) from conduct amounting to delay or laches or acquiescence, though not of a character to constitute a complete defence. The inaction of an applicant may allow a respondent to continue trading and thereby, to some extent (to paraphrase Isaacs J in Turner 42 CLR 352 at 366) "suffer the party to acquire some goodwill and some responsibilities which it would now be inequitable absolutely to ignore." 57 Secondly, as to the conduct of the hearing, Winnebago submitted that the factual proposition put by Knott as the foundation for the discretionary denial or limitation of relief, was not part of the controversy. That factual proposition was that Knott had considerably increased the size of its business through concurrent use. I cannot agree. First, in address, the point was made clearly by senior counsel for Knott (see transcript of 2 June 2011 at p 192). Secondly, and more fundamentally, the case involved in its essence Knott's own reputation. It had used the name and mark on sales for 32 years. Winnebago had, nevertheless, a reputation in Australia. The first point at which the assessment of that reputation arose was at the commencement of the offending conduct. Thereafter, even if, as is the case, Winnebago had a reputation in Australia in 1978, 32 years of sales and conduct by Knott (25 years of which was with the knowledge of Winnebago) may bear on the question of whether the conduct remained deceptive and what relief should be given, if any, in respect of it. 58 I turn then to the period 1978 to 2010 and the question of relief.

Winnebago's reputation and appropriate relief 59 I have discussed Winnebago's reputation up to 1978. The evidence before the primary judge and his Honour's findings extended to more recent times. 60 In the United States, Winnebago continued to grow: see the findings at [52]-[55] of the reasons. Winnebago vehicles featured in a number of films in 1985, 1987, 1996, 2003 and 2007: see [55] of the reasons. Winnebago continued to be referred to in the print media. It provided products to racing car events. 61 Winnebago vehicles were exported to many parts of the rest of the world, including Europe, Japan, Taiwan, Norway, Mexico, South Korea, Switzerland and China. 62 By 1989, the word "Winnebago" was included in the Oxford English Dictionary as part of the phrase "Winnebago camper" being defined as "a motor vehicle with insulated panels used as living accommodation by campers". Similar definitions appeared in later dictionaries including the 2004 edition of the Australian Oxford Dictionary: see [60] of the reasons. 63 That this spillover reputation was real can be seen from the fact that there were a number of complaints of persons who had purchased or rented recreational vehicles in Australia that were manufactured by Knott. The primary judge dealt with this at [84] of the reasons. His Honour said: …These communications manifest a belief on the part of the complainant that the RVs which were manufactured by Knott had in fact been manufactured by Winnebago or by some organisation under licence from Winnebago… 64 It is unnecessary to deal with this evidence beyond this reference. It does not assist in the establishment of reputation in 1978. Nor does it establish that all persons who purchased or rented a recreational vehicle manufactured or sold or distributed by Knott or the other appellants would have been misled as to trade origin. It does, however, establish the likelihood of some deception and confusion and of the existence of the reputation of Winnebago. At [86] of the reasons, the primary judge referred to the fact that in 2009, Knott's Sales and Marketing Manager said in an interview with a journalist from the Courier-Mail in Brisbane, "A lot of people confused us with the US company." 65 Nevertheless, Knott had used the name and logos in conjunction with its own business since 1978. It had advertised the vehicles in association with "Freeway" vehicles and with its business outlets and dealerships. The use by Knott and its dealers was extensive. Knott has sold over 6,000 recreational vehicles between 1992 and 2010 with the mark. The dealership built up by Knott is extensive. There are currently 11 dealers across Australia in a number of States. Knott currently employs 215 people. Knott has expended significant assets in the promotion of its business. 66 It is difficult to disentangle the extent to which Knott has been advantaged by any misleading association with Winnebago. There was evidence, to which I have already referred, that at least in the 1990s, Knott deliberately sought to obtain some connection. Further, the findings as to Mr Binns' intention in 1978 to take advantage of such reputation as Winnebago had in Australia is relevant also. Nevertheless, over decades, with the deliberate and informed choice of Winnebago, Knott built its business, and undertook responsibilities and expended money on a certain hypothesis. It would be unjust to ignore this, if Winnebago can be assured by orders of the Court of no further entrenchment on its trade connection and reputation, and if the public could be appropriately protected by a measure that distinguishes Knott's vehicles from Winnebago's. Nothing can now be done about the thousands of recreational vehicles marked "Winnebago" on the road in Australia that were manufactured by Knott. In order to protect the public from deception, and to protect Winnebago, the distinguishing would have to be not merely in words and documents comprising or attending the advertisement, sale or hire of the vehicles, but would also have to be on the vehicle itself, so that it would be plain to someone that the vehicle was not manufactured by anyone with any connection with Winnebago of the United States. 67 This limitation of relief can be seen to reflect not only the balancing of the respective interests of Knott and Winnebago in the reputation developed by Knott's expenditure, in the context of Winnebago's extraordinary (and informed) delay, but also the erosion of the reputation of Winnebago: Thai World Import & Export Co Ltd v Shuey Shing Pty Ltd (1989) 17 IPR 289 at 302-303; and see also Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 4) [2006] FCA 446; 229 ALR 136 at 154 [97]. I do not accept that Knott has shown that Winnebago's reputation has been extinguished. The evidence reveals sufficient to conclude that at least some of Knott's reputation in the use of the name and marks was the development of its goodwill and reputation; that not all of the development of its business involved the taking advantage of Winnebago's reputation in Australia. In normal circumstances, this would not matter; it would be something that the party passing off would have to accept as a consequence of its wrongdoing. Here, however, Winnebago has contributed to this by standing by, informed of the position, for 25 years while Knott expended money and built a business, part at least of which was its own reputation. 68 In my view, it would be unjust to ignore these matters and to require Knott to cease to use the name and logos, if, in connection with the advertisement, sale or hire of, or other dealing with the recreational vehicles a clear distinction between Winnebago and Knott and the other appellants was made. That distinction would need to be made on the vehicle itself, clearly and visibly, as well as in documents dealing with the vehicle and anything that was said about the vehicles. 69 It was submitted that any claim for injunctive relief was statute barred because passing off had ceased in 2003 when it was submitted Knott began distinguishing its vehicles in advertisements. I reject this submission. The use of the name and marks is apt to attract an association between Winnebago and the vehicles - to suggest a trade source or connection. Such distinguishing as occurred was not apt to dispel this.

Knott's trade mark 70 In cl 1 of the Settlement Agreement, Mr Binns and Knott agreed: …not to apply for registration of the Proprietary Marks in any country. 71 In the context of the terms of cl 1, there could be no doubt that "any country" included Australia. Knott argued below that "apply for registration" was not wide enough to cover application for renewal of registration. So, it was said, the complaint about a patent breach of contract was statute barred. I reject that submission. The Settlement Agreement was a short succinct commercial document. It is to be read conformably with its language, so as to give it business efficacy. The operation of the Trade Marks Act 1995 (Cth) is not to give perpetual protection upon initial registration. Section 72(3) provides for registration for 10 years. Renewal is available: Pt 7 Div 2. Here renewal occurred in 1997. I would read "apply for registration" as wide enough to encompass "apply for renewal". That is a fair and broad reading, not one that is pedantic and likely to defeat or undermine the commercial purpose: Hillas & Co Ltd v Arcos Limited (1932) 147 LT 503 at 514; Australian Broadcasting Commission v Australasian Performing Right Association Ltd [1973] HCA 36; 129 CLR 99 at 109-110. This is not to imply a term into the agreement, rather it is to give proper content to the words used by the parties: Martin-Baker Aircraft Co Ltd v Canadian Flight Equipment Ltd [1955] 2 QB 556 at 578 (McNair J). 72 This being the proper construction of cl 1 of the Settlement Agreement, Knott breached the contract by applying to renew the registration. It was not argued that this was a ground for cancellation under the Trade Marks Act s 88, and Pt 5 Div 2, and Pt 4 Div 2. It would, however, be a ground upon which Knott might be restrained from using the mark, or, at least, might be required to pay damages for breach of contract. 73 When one turns to the question of cancellation under s 88, the primary judge's decision was criticised by Knott on the basis of his Honour's conclusion as to reputation in 1982. That criticism fails because of the existence of relevant reputation in 1978. 74 The cancellation was supportable at least under s 88(2)(a), and through it, ss 57 and 43. The mark would be likely to deceive or cause confusion because of the existence of the reputation of Winnebago in 1997. A similar argument would be available under s 88(2)(c) as at 2010. 75 Knott submitted that even if in 1997 or 2010 the registration of the trade mark was liable to deceive or cause confusion, the primary judge should not have exercised his discretion to cancel the mark because that deception and confusion had not occurred through any act or default of Knott, and that any such deception or confusion arose more from the informed and deliberate inaction of Winnebago. I would reject that submission. Knott was not entirely innocent and lacking fault in this regard. Mr Binns commenced using the name and mark to avail himself of such reputation as Winnebago had. At least at times in the 1990s, Knott associated itself with Winnebago. The extraordinary delay of Winnebago undoubtedly would have contributed to the deception and confusion, but Knott and its controllers were not lacking in fault in the causation of such deception or confusion. Further, if Knott could, because of its breach of the Settlement Agreement, arguably be restrained from exercising its legal rights or be liable in damages for clear breach of contract in applying for registration or renewal of registration, such could legitimately be taken into account in deciding whether to cancel the trade mark. 76 I would not interfere with the order to cancel the trade mark.

Residual argument 77 The appellants submitted that because Winnebago did not intend to enter the market at the time the offending conduct commenced and for a period thereafter, it is denied an entitlement to relief, even if it did have a relevant reputation at that time and now does wish to enter the market. ConAgra 33 FCR 302 was said to be authority for this; it is not.

Orders 78 I would hear the parties on orders, including as to costs. The terms and placement of the relevant distinction that needs to be made was not debated on appeal. Order 8 made by the primary judge may well provide a satisfactory basis for some of the relevant orders. It is appropriate to set aside some of the orders made by the primary judge; the appropriateness of other orders in their place may be the subject of debate. 79 The orders that I propose are: (1) Appeal allowed. (2) Set aside Orders 1, 3, 5, 6, 9, 10 and 11 made on 6 September 2012. (3) Within 21 days the parties exchange submissions on the orders that should be made, including draft orders, and within 28 days the parties file and serve further submissions on orders and any draft proposed orders. I certify that the preceding seventy-nine (79) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Chief Justice Allsop.

Associate: Dated: 7 June 2013 IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 1417 of 2012

SYDNEY CAMPERVAN & MOTORHOME RV CENTRE PTY LTD (ACN 112 316 560)

BRISBANE RV'S CARAVANS AND CAMPERS PTY LTD (ACN 102 806 520)

A & K CARAVANS AND MOTOR HOMES PTY LTD (ACN 100 888 748)

JUDGEs: ALLSOP CJ, COWDROY J and JAGOT J DATE: 7 June 2013 PLACE: SYDNEY

Cowdroy J: 80 I have had the benefit of reading the reasons of the Chief Justice and it is unnecessary to repeat the summary of facts provided by his Honour. 81 This appeal raises seven discrete questions for consideration as follows:

Reputation 1. Did Winnebago have a sufficient reputation in Australia as at 1 June 1982 such as to entitle them to protection from passing off, or misleading or deceptive conduct? 2. If the answer to question 1 is yes, should the relevant date at which Winnebago's reputation is assessed be some time in 1978 rather than 1 June 1982? 3. If the answer to question 2 is yes, did Winnebago have a sufficient reputation in Australia as at 1978 such as to entitle them to protection from passing off, or misleading or deceptive conduct?

Estoppel 4. Is Winnebago estopped from seeking any relief against Knott for the use of the Winnebago name and logo in Australia by reason of representations made by Winnebago in the Settlement Agreement and Winnebago's delay in commencing legal action to enforce their alleged rights?

Laches and acquiescence 5. Given Winnebago's delay in commencing legal action against Knott to enforce their alleged rights, has a defence of laches been made out by Knott?

Trade mark 6. Should the Court exercise its discretion to not cancel Knott's trade mark registration in light of Winnebago's delay in commencing legal action?

Scope of the remedies 7. In all of the circumstances, should the relief awarded to Winnebago be limited? 82 I agree with, and respectfully adopt, the findings of the Chief Justice with respect to the reputation of Winnebago in Australia. I do not consider it necessary to provide any further reasons with respect to questions 1 to 3 above. 83 I will provide separate reasons in answer to the balance of the questions.

Question 4: Estoppel 84 Winnebago first became aware of the unauthorised use of its name in Australia by the appellants in 1985 following a communication from a third party. However it was not until late 1991 that Winnebago attempted to bring some formality to the unauthorised use of its name. Winnebago entered into negotiations with the appellants which concluded in the Settlement Agreement dated 16 November 1992 ('the Settlement Agreement'). In the Settlement Agreement, Winnebago's proprietorship of the marks 'Winnebago' and 'W' is acknowledged by Knott as was the goodwill and reputation associated with those marks in the United States of America and 'elsewhere in the world'. Further, Winnebago's claim that Binns and Knott had used the proprietary marks in the United States of America without having been granted a licence from Winnebago and had 'generally sought to pass themselves off as associated with Winnebago and to trade on Winnebago's goodwill and reputation embodied in the Proprietary Marks' was recorded in the Settlement Agreement. The recitals referred to the fact that the parties wished to avoid legal proceedings. Relevantly, item 1 of the Settlement Agreement provided: Binns and the Australian Company hereby agree: not to use the Proprietary Marks in the United States of America, or in any country other than Australia; not to apply for registration of the Proprietary Marks in any country; and not to associate themselves or related entities with Winnebago or its products now or in future. 85 Item 6 provided: This Agreement does not address, impact upon, or relate in any way, manner or form to the use or ownership of the Proprietary Marks in Australia or to any rights relating to the Proprietary Marks based on reputation or use under any statute or at common law in Australia. By entering into this Agreement, Winnebago does not expressly or impliedly acknowledge that Australian Company has any rights of any nature whatsoever to the Proprietary Marks in Australia. To the extent not expressed in this Agreement, this Agreement shall be without prejudice to the rights of Winnebago and Winnebago expressly reserves all of its legal rights. 86 Correspondence at that time indicated that Winnebago had no intention of selling their products in Australia. However in 1998 Winnebago reminded the television channel MTV not to broadcast beyond Australia a television program known as Road Rules in which Knott and its dealers were featured. 87 Before the primary judge the appellants maintained that Winnebago represented to them that by virtue of the settlement agreement they were permitted to use the Winnebago name and logo in Australia in perpetuity. The primary judge found that Winnebago made no such representation by means of the Settlement Agreement. His Honour stated at [145]: (a) The Settlement Agreement does not contain any release by Winnebago in favour of Knott; (b) The Settlement Agreement does contain a covenant not to sue Knott or Bruce Binns in the USA (but not elsewhere). There is no promise not to sue Bruce Binns or Knott in Australia; (c) Clause 6 makes very clear that it was the parties' intention by the Settlement Agreement to leave matters as they stood as at the date of that Agreement until such time as Winnebago might wish to exercise its rights in respect of the Winnebago marks. Clause 6, properly understood, is a statement for the benefit of Winnebago to the effect that all of its rights as at September 1992 against Knott in respect of the misuse of the Winnebago marks, whether at common law or under statute, were reserved in the sense that whatever rights existed at the time that Agreement was signed remained available to be exercised by Winnebago at a time in the future of its choosing. In my judgment, cl 1 does not detract from this interpretation. All that cl 1 does is place restrictions on the future conduct of Knott in relation to the Winnebago marks by preventing it from using those marks in any country other than Australia and by prohibiting it from applying to register those marks in any country (including Australia). 88 His Honour rejected the appellants' claim that Winnebago was estopped from seeking injunctive relief against the appellants. 89 On appeal, the appellants submit that his Honour erred in not considering their claim of estoppel in the context of both the terms of the Settlement Agreement, and the subsequent delay by Winnebago in seeking to enforce its alleged rights to the trade marks in Australia. Further, the appellants submit that any future rights reserved by Winnebago by way of cl 6 of the Settlement Agreement have been waived by effluxion of time. 90 Winnebago maintains that the alleged representation was not clear and unequivocal, and that even if such a representation had been made, the appellants did not rely upon it. Further, Winnebago submits that there was no evidence that it knew or intended for the appellants to act or abstain from acting in relation to the representation. 91 To found an estoppel, the representation relied upon must be 'clear and unequivocal': see Legione v Hately (1983) 152 CLR 406 at 435-37; Bunbury Foods Pty Ltd v National Bank of Australasia Limited (1984) 153 CLR 491 at 501-02; Foran v Wright (1989) 168 CLR 385 at 410-11. As referred to by Mason and Deane JJ in Legione v Hately at 435-36, the decision of Western Australian Insurance Co Ltd v Dayton (1924) 35 CLR 355 is of similar effect. In that decision, Isaacs ACJ, in referring to the requirement that a representation must be 'unambiguous' if it is to found an estoppel in pais, said: The word 'unambiguous' is explained by Kay L.J. in Low v. Bouverie [1891] 3 Ch., at p. 113, the word and its explanation occurring on the same page. The Lord Justice says: 'It is essential to shew that the statement was of such a nature that it would have misled any reasonable man, and that the plaintiff was in fact misled by it'. [Reference inserted] 92 The terms of the Settlement Agreement and the subsequent delay of Winnebago in enforcing its claimed rights do not amount to the clear and unequivocal representation alleged by the appellants. Read in isolation from the other clauses in the Settlement Agreement, clause 1, in excising Australia from the general prohibition on Knott using the Winnebago marks, might constitute such representation. However the Settlement Agreement must be interpreted and understood as a whole. In expressly reserving its legal rights with respect to the Winnebago marks in Australia in cl 6, Winnebago gave no unequivocal undertaking that it would refrain from taking proceedings to preserve its rights in the future. 93 The appellants submitted that the lapse of time since the Settlement Agreement was entered into constituted a waiver of the reservation of Winnebago's rights. Such contention must be rejected. Whilst Knott has continued to use the Winnebago marks in Australia since the formation of the Settlement Agreement, Winnebago's inaction would not lead a reasonable person to believe that Winnebago had foregone its rights evinced by cl 6. By entering the Settlement Agreement, there always remained the possibility that Winnebago would at some point seek to assert its rights over the Winnebago marks in Australia. Such risk was one that Knott necessarily adopted. Accordingly it was not reasonable for Knott to act upon an assumption that Winnebago would refrain from asserting rights over the Winnebago marks in Australia: cf. Commonwealth v Verwayen (1990) 170 CLR 394 at 445; Standard Chartered Bank Australia Ltd v Bank of China (1991) 23 NSWLR 164 at 180-81. 94 His Honour's consideration of estoppel in the first instance decision at [145] (set out at [87] above) does not appear to consider the aspect of the appellants' submission concerning Winnebago's silence subsequent to the Settlement Agreement. Nevertheless, this omission does not detract from the finding that Winnebago is not estopped from the relief it seeks. Accordingly, Winnebago's submission that there was no evidence that Winnebago knew or intended the appellants to act or abstain from acting in relation to the representation need not be considered.

Question 5: Laches and acquiescence 95 The appellants have used the terms 'laches' and 'acquiescence' interchangeably in their submissions, possibly resulting from the imprecision with which the law has addressed these concepts. As was recognised by Deane J in Orr v Ford (1989) 167 CLR 316 at 338, 'acquiescence may be used in at least one of three ways'. His Honour said of such principles: First, it is sometimes used as an indefinite overlapping component of a catchall phrase also incorporating "laches" or "gross laches" and/or "delay". While such phrases may provide a convenient means of referring to a general area of equity, they tend to obscure principle rather than to assist in its identification. Secondly, acquiescence is used as a true alternative to "laches" to divide the field between inaction in the face of "the assertion of adverse rights" (acquiescence) and inaction "in prosecuting rights" (laches): see, eg, Smith, A Manual of Equity Jurisprudence, 14th ed (1889), p 24. Upon analysis, that use of the word "acquiescence" is not helpful since laches ("an old French word for slacknesse or negligence or not doing": Co Litt 380b; Partridge v Partridge [1894] 1 Ch 351 at 360 comprehends silence or inaction in the face of an unwarranted assertion of adverse rights by another as well as inaction or delay in prosecuting one's own rights. Thirdly, and more commonly, acquiescence is used, in a context where laches is used to indicate either mere delay or delay with knowledge, to refer to conduct by a person, with knowledge of the acts of another person, which encourages that other person reasonably to believe that his acts are accepted (if past) or not opposed (if contemporaneous) see, eg, Cashman, at 153; Glasson v Fuller [1922] SASR 148 at 161-2. 96 The appellants' defences of laches and acquiescence are based upon the substantial delay between Winnebago first becoming aware of the appellants' use of the Winnebago marks in Australia and the commencement of the present proceeding, and secondly the resulting prejudice to the appellants should Winnebago's claim for relief be upheld. Such prejudice would arise from the loss of the goodwill and reputation which the appellants, in particular Knott, have established during the period of delay. In this way, the references to laches and acquiescence in Winnebago's submissions overlap as referred to by Deane J. For convenience, only laches will be referred to. 97 In Lindsay Petroleum Co v Hurd (1874) LR 5 PC 221 at 239, Lord Selborne LC observed that the doctrine of laches is not 'an arbitrary or a technical doctrine'. Referring to general circumstances where laches may be made out, his Honour went on to say at 239-40: Where it would be practically unjust to give a remedy, either because the party has, by his conduct, done that which might fairly be regarded as equivalent to a waiver of it, or where by his conduct and neglect he has, though perhaps not waiving that remedy, yet put the other party in a situation in which it would not be reasonable to place him if the remedy were afterwards to be asserted, in either of these cases, lapse of time and delay are most material. But in every case, if an argument against relief, which otherwise would be just, is founded upon mere delay, that delay of course not amounting to a bar by any statute of limitations, the validity of that defence must be tried upon principles substantially equitable. Two circumstances, always important in such cases, are, the length of the delay and the nature of the acts done during the interval, which might affect either party and cause a balance of justice or injustice in taking the one course or the other, so far as relates to the remedy. 98 The above passage has been cited with approval in a number of Australian decisions: see for example Goldie v Getley [No 3] [2011] WASC 132 at [231], Collum v Opie (2000) 76 SASR 588 at [54], and Orr v Ford at 341. 99 The defence of laches is premised upon the principle that the granting of the relief sought by the delaying party would, in all the circumstances, be unjust. Whilst the facts giving rise to a defence of laches will often also engage other defences, the doctrine of laches is not bound by the particular rules governing such other defences. As referred to by Deane J in Orr v Ford at 339: …the rule that a representation must be clear to found an estoppel… may preclude particular circumstances giving rise to an estoppel by conduct while not preventing the same circumstances constituting a defence of laches. 100 Since the finding has been made that the alleged representation giving rise to the appellants' estoppel claim was not sufficiently clear at [91]-[92] above, the example of Deane J is apposite to the present circumstances. Further, the fact that Winnebago has not waived its rights reserved by cl 6 of the Settlement Agreement does not automatically defeat the appellants' laches defence; rather it is only a factor relevant to the issue of whether the actions of Winnebago support the granting of the relief it seeks: see the extract from Lindsay Petroleum Co v Hurd set out at [97] above. 101 The primary judge rejected the appellants' claim of laches at first instance, stating at [157]: … even if laches and acquiescence were available as a defence in the present case and even if mere delay was a factor to be taken into account in granting the discretionary relief claimed by Winnebago, in the very special circumstances of this case, I do not consider that the delay since late 1991 on the part of Winnebago in bringing formal court proceedings against Knott and its dealers provides any proper basis for refusing relief. It may well have been a sound basis for refusing interlocutory relief but I do not think that it is such a basis for refusing final relief. 102 In reaching such conclusion, his Honour has overlooked the conduct of the appellants from 1991. The evidence established that Knott promoted the Winnebago businesses in Australia, and had entered into numerous arrangements with dealers throughout Australia. Whilst the 'calculated risk' referred to by his Honour may have perhaps been reasonable in the years immediately following the execution of the Settlement Agreement, it is scarcely reasonable to consider that injunctive relief should be granted after such a long period of delay during which the appellants were working industriously in the promotion of their business. The appellants might have reasonably believed that after several years since the Settlement Agreement was made, Winnebago would not seek to enforce its reserved rights and that Winnebago had no interest in promoting its activities in Australia. 103 If an injunction preventing any use of the Winnebago marks by the appellants were granted, Knott and Binns would suffer severe detriment. The substantial goodwill and reputation in the Winnebago brand that the appellants had developed since 1978 would be lost. Such detriment would also extend to the dealerships with which Knott has commercial relationships. There are many thousands of vehicles which are used in Australia bearing the name Winnebago which the respondent, by its tacit acceptance of that position, had taken no steps to restrain until it instituted the present proceeding. 104 The circumstances giving rise to the claim for relief, and the appellants' defence of laches is not dissimilar to those considered by the High Court in Turner v General Motors (Australia) Pty Ltd (1929) 42 CLR 352. In that case, General Motors Corporation of America ('GM America') decided that it would expand its operations to Australia. In 1926, GM America caused General Motors (Australia) Pty Ltd ('GM Australia') to be incorporated and announced that such company would commence manufacturing and distributing vehicles in Australia. Upon becoming aware of this development, the appellant revived his business name of 'General Motor Company' under which he had previously traded. At 369, Dixon J said: It appears that the plaintiff [GM Australia] complained to the appellant in July 1926; in August, wrote a letter protesting against the appellant's registration as a firm to the Registrar-General who communicated the protest to the appellant; in February 1927 and September 1927, caused traps to be laid for the appellant, and sued in December 1927. Its manager said he delayed because he thought the appellant's business might die out, and because he had to seek authority to sue from his head office. In the meantime the appellant was pursuing the course of deception which he had begun and was amplifying it with specious advertisements. 105 The High Court found that such facts did not support a plea of laches, but that the delay on the part of GM Australia in instituting proceedings should restrict the relief to be granted. The appellant was restrained from using the name 'General Motors' without a clear disclaimer to differentiate his business from that of GM Australia: see Turner v General Motors (Australia) Pty Ltd at 370. 106 In the present circumstances, the Court considers that the granting of relief to completely restrain the appellants from the use of the Winnebago marks to be unreasonable in light of the substantial delay by Winnebago. As stated by Giffard LJ in Lee v Haley (1869) LR 5 Ch App 155 at 160, 'in cases of delay, [the Court] must consider whether the nature of the injunction is such that if it is granted the defendant will have been injured by the delay'. This is not to say however that some relief should be granted to distinguish in the future the products of the appellants from those of Winnebago. 107 I agree with the relief proposed by the Chief Justice.

Question 6: Trade mark 108 Knott is the current owner of registered Australian trade mark 729,781. Knott applied to register the mark on 12 March 1997. The application for registration was accepted on 5 November in the same year. The appellants acknowledged that such application constituted a breach of cl 1 of the Settlement Agreement, which in part stated: Binns and the Australian Company [being Knott] hereby agree: … not to apply for registration of the Proprietary Marks in any country. 109 Before the primary judge, Winnebago applied to have the registration of the Winnebago trade mark cancelled pursuant to an order of s 88(1) of the Trade Marks Act 1995 (Cth) ('the Trade Marks Act'). The legislative scheme is such that, for an application under s 88(1) to be successful, a ground set out in s 88(2) must be made out. Winnebago's application for rectification of the register was made pursuant to the grounds at ss 88(2)(a) and 88(2)(c), being: (a) any of the grounds on which the registration of the trade mark could have been opposed under this Act; … (c) because of the circumstances applying at the time when the application for rectification is filed, the use of the trade mark is likely to deceive or cause confusion. 110 For the purposes of s 88(2)(a), Winnebago relied on s 42(b) of the Trade Marks Act which provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. It appears from [23] of the primary judge's decision that the basis of the submission that the use of the Winnebago trade mark would be contrary to law stems from s 43, which operates to prevent a trade mark from being registered should it be likely to deceive or cause confusion. Accordingly, there is significant overlap between the two grounds of Winnebago's rectification application. 111 The primary judge found that the Winnebago trade mark should be cancelled, his Honour stating at [174]: Given the findings which I have made in respect of Winnebago's reputation in Australia as at 1982 and subsequently and having regard to the evidence which demonstrates beyond argument that Winnebago's reputation in this market became more widely known between 1982 and 1997 (when the application for registration in respect of the Australian mark was filed by Knott), I think that Winnebago has made out a case for relief pursuant to s 88(2) of the TM Act. I do not consider that there is any discretionary reason to refuse that relief. 112 The appellants challenge this finding on two grounds. The first is that to the extent that the primary judge based the cancellation on Winnebago's reputation in Australia, his Honour's finding should be overturned on the basis that Winnebago had no such sufficient reputation. Such submission should be rejected for the reasons stated by the Chief Justice. 113 The second challenge is premised upon the ground that the primary judge ought to have exercised the Court's discretion under s 89 of the Trade Marks Act to refuse Winnebago's application for rectification. Such section relevantly provides that: (1) The court may decide not to grant an application for rectification made: (a) … (b) on the ground that the trade mark is liable to deceive or confuse (a ground on which its registration could have been opposed, see paragraph 88(2)(a)); or (c) on the ground referred to in paragraph 88(2)(c); if the registered owner of the trade mark satisfies the court that the ground relied on by the applicant has not arisen through any act or fault of the registered owner. 114 The appellants argue that any confusion or deception that arises as a result of the Winnebago trade mark flows from Winnebago's conduct and omissions, a part of which is Winnebago's failure to exploit the trade mark in Australia. 115 This argument too must fail. First, where a trade mark of an overseas company has acquired a reputation in Australia, and an Australian company subsequently registers an identical trade mark, it is not apparent that a failure by the overseas company to protect that trade mark would be the cause of the relevant confusion and or deception. Indeed, such a proposition appears prima facie to be at odds with s 60 of the Trade Marks Act which allows for the registration of a trade mark to be opposed on the ground that a similar mark has acquired a reputation in Australia. 116 Second, any suggestion that Winnebago should have exploited the Winnebago trade mark in Australia to avoid confusion or deception is defeated by Knott's express agreement not to apply for registration of the Winnebago trade mark in any country when it entered into the Settlement Agreement. 117 For these reasons, I am satisfied that there is no error in the primary judge's decision to issue an order cancelling the registration of the Winnebago trade mark pursuant to s 88(1) of the Trade Marks Act.

Question 7: Scope of the remedies 118 The issues that arise under this question have been addressed in view of my findings at [106] and [107] above.

Notice of Contention and Orders 119 I concur with the observations of Jagot J regarding the notice of contention, and I agree with the orders proposed by the Chief Justice. I certify that the preceding forty (40) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Cowdroy.

Associate: Dated: 7 June 2013 IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 1417 of 2012

SYDNEY CAMPERVAN & MOTORHOME RV CENTRE PTY LTD (ACN 112 316 560)

BRISBANE RV'S CARAVANS AND CAMPERS PTY LTD (ACN 102 806 520)

A & K CARAVANS AND MOTOR HOMES PTY LTD (ACN 100 888 748)

JUDGEs: ALLSOP CJ, COWDROY J and JAGOT J DATE: 7 June 2013 PLACE: SYDNEY

The question of relief 120 There is one striking fact about this case which suggests that, irrespective of any of the substantive grounds of appeal, there is a real issue about the relief granted. The fact is that from May 1985 the respondent knew that the first appellant was using the respondent's name of Winnebago and its Winnebago trade marks in Australia to sell recreational vehicles here and took no action to stop this from happening until starting the proceeding in 2010 to which this appeal relates. For a period of 25 years the respondent thus sat on its hands and did nothing to prevent the first appellant from continuing its conduct. The result is that the first appellant's business in Australia, using the Winnebago name and logo, has now grown to the point where it has sold about $560 million of vehicles in Australia, been awarded many multiples of industry awards, been promoted throughout Australia by the first appellant using the Winnebago name and logo, established a significant network of dealers throughout Australia, and employs 215 people in Australia. 121 Despite this, the relief that the respondent obtained was to prevent the appellants from using the Winnebago name and logo in Australia from 3 September 2013 onwards (the injunction having been stayed by the primary judge for a period). Another fact should also now be recorded. The respondent started the proceeding in 2010 because by that time it had decided that it wished to enter the Australian market using its Winnebago name and logo. The consequence is that from 3 September 2013 the respondent will be able to take advantage of the reputation and goodwill that the first appellant has developed in Australia over some 30 years (the first appellant having commenced trading some years before the respondent became aware of it in May 1985). The respondent denied that this would be so, using some customer complaints that it had received from Australian purchasers of the appellant's recreational vehicles who wrongly believed they were connected to the respondent, to evidence its position that the first appellant's reputation in Australia was not to its advantage. The respondent also used two examples of the first appellant having traded on the respondent's name over the last 30 years (in 1995 and 2010) to support the conclusion that the first appellant's reputation and goodwill in fact belonged to or depended on that of the respondent. Otherwise the respondent asserted that the "all and nothing" relief which the primary judge granted was a product of the appellants' making because they never proposed any form of modified relief other than in the vaguest possible terms. 122 The last argument can be dismissed immediately. In their opening and closing addresses the appellants submitted that as the respondent had stood back since 1985 and allowed the first appellant to develop its business into a large and successful enterprise, the respondent should either be denied discretionary relief altogether or: [i]f the Court were to find that consumer protection concerns made some relief appropriate…the Court would do the minimum equity to necessary to protect such concerns …For example, the particular conduct reflected in Exs C and E [the advertising in 1995 and 2010 trading on the respondent's reputation identified above] might appropriately be the focus of limited relief…[otherwise] any discretionary relief should be framed to do only what is necessary to avoid confusion. An example of such limited relief would be by way of disclaimer to be applied in the [appellant's] use of WINNEBAGO to make express the lack of any association with the [respondent]. 123 The appellants also submitted that: [i]n the event that the Court finds one or more of the [respondent's] claims made out, the [appellants] would wish to be heard on the form of the orders. As submitted above, any relief should be confined so as to provide the minimum necessary for consumer protection, the [respondent] having forsaken its private rights by reason of its extraordinary delay. 124 It is true that the appellants never articulated the form of the disclaimer which might be adequate for the purpose identified but this is not a result of the appellants' not having put the argument. It is a result of the fact that the primary judge's finding, in particular at [128] that the controlling mind of the first appellant, Mr Binns, had "hijacked the Winnebago marks in Australia in a bold attempt to pre-empt Winnebago's opening its doors here [and] …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 [the first appellant] would be able to trade off its reputation". And at [155] the primary judge found that when the first appellant and Mr Binns entered the settlement agreement with the respondent in 1992, the terms of which are at [110] of the reasons of the primary judge, this was done on the basis that: [t]here was always the risk that, if Winnebago wished to enter the Australian market, Knott would have to rebrand its products and its business. No doubt, Bruce Binns took a calculated risk in this regard, preferring to gain as much revenue and advantage from continuing to conduct business in the same way as Knott, at his direction, had done since 1982. In commercial terms, one can readily understand that a businessman in the position of Bruce Binns might well have come to a position where he assessed such an outcome as far preferable to litigating with Winnebago in 1991. 125 These facts having been found, the primary judge concluded at [181] that: …in the special circumstances of this case, I will entertain an application, should it become necessary to do so, that the injunctive relief which I propose to grant not come into effect or be suspended for a reasonable time in order to allow the respondents to rebrand their business in the most efficient and economical way having regard to the costs of doing so and to the fact that they have been allowed to continue trading under and by reference to the Winnebago marks for a very long period of time. I urge the parties to agree an appropriate period for this rebranding to occur. In the event that agreement cannot be reached, I will determine the appropriate period after considering evidence and argument on the point. 126 In other words, the appellants did not obtain the opportunity to be heard on the form of the orders because the findings of the primary judge rendered the question moot. The reasons for judgment effectively precluded the appellants from doing other than agreeing the terms of orders reflecting those reasons including that an injunction should be granted restraining them from using the Winnebago name and logo, the only issue for further hearing if not agreed being the length of the stay. 127 For these reasons the appellants cannot now be prevented from raising the question of the nature of the relief on appeal on the basis that they failed to out the argument below. The appellants have raised that question in terms both dependent on the resolution of the substantive issues in the appeal and independent from the resolution of those issues. In other words, the appellants contend that even if they fail on all substantive issues the primary judge's resolution of the issue of relief miscarried because, given the extraordinary delay by the respondent, any relief should be limited to that necessary to ensure consumer protection. 128 The first argument can also be put to one side without too much difficulty. The first appellant has been in business for 35 years. It has sold more than $560 million of vehicles in Australia during that period. It would be surprising if there were no complaints about the quality of its products and services. The complaints cannot undermine the fact that the first appellant has been in business for some 35 years during which the business has grown into a relatively large and apparently successful enterprise. 129 The cogency of the appellants' submission can first be tested assuming that the factual findings of the primary judge in [128] and [155] are sustainable. Accordingly, let it be assumed for the purpose of this analysis that Mr Binns decided to use the Winnebago name and logo to prevent the respondent from entering the Australian market or, if he could not prevent the respondent from doing so, to enable him to extort money from the respondent. Whatever Mr Binns' intention at the time he took the name and logo or the nature of the "calculated risk" he took when he entered the settlement agreement in 1992, the inescapable fact is that the first appellant has built up a substantial business in Australia over a very lengthy period of time. It simply cannot be that the whole of that business has developed for no reason other than the Winnebago name and logo. In fact, other than the use of the name and logo itself the evidence discloses two instances over 35 years when the first appellant can be said to have deliberately traded on the respondent's reputation. Moreover, Mr Binns gave evidence that at no time had he sought to associate his company, the first appellant, with the respondent. 130 Mr Binns was cross-examined about his evidence but, insofar as relevant to this issue, the cross-examination was limited to his reason for initially choosing to use the Winnebago name and logo. It was not put to Mr Binns that the entire business he had built up over the last 35 years had been on the basis of nothing more than the reputation of the respondent. Nor is it surprising that this is the case. As noted, it is simply impossible to suspect, let alone infer, that this might be so. 131 For this reason, accepting for this purpose the findings at [128] and [155], the fact that restraining the first appellant from using the Winnebago name and logo would necessarily allow the respondent to take the advantage of the first appellant's work and expenditure for over 25 years when the respondent had sat on its hands throughout this period despite knowing what the first appellant was doing, necessarily raised for consideration the question of the substance of the relief which should be granted. This question is separate and distinct from the arguments about laches, acquiescence and delay which the primary judge considered at [148] - [158]. The question is not one of a defence but of the discretion about the shaping of the ultimate remedy that the first appellant sought to invoke if all of its substantive arguments failed. 132 On this basis, assuming that the findings at [128] and [155] are sustainable, the result of the remedy granted in this case nevertheless, in my view, discloses error in the sense required for appellate intervention as described in House v The King (1936) 55 CLR 499 at 505. The result enables the respondent, now that it has decided it does wish to enter the Australian market, to take advantage of the first appellant's work over the last 30 or so years and the associated reputation and goodwill that the first appellant has developed. It enables this despite the respondent having sat on its hands knowing that the first appellant was using the Winnebago name and logo for 25 years. That result, in my view, is "unreasonable or plainly unjust" on the facts of this case. Accordingly, the exercise of the discretion is amenable to appellate intervention "on the ground that a substantial wrong has occurred" (House v The King (1936) 55 CLR 499 at 505). 133 There is another basis upon which the same conclusion may be reached. It concerns the findings at 128] and [155] of the primary judge's reasons. The difficulty with the findings in [128] is that, irrespective of the dim view the primary judge reached about Mr Binns' credit as a witness, it was not put to Mr Binns that he decided to use the Winnebago name and logo in order to pre-empt the respondent from opening its doors here. Nor was it put that he thought by so doing he could keep the respondent out of Australia. And it also was not put to him that, if he could not keep the respondent out of Australia, he could at least hold the respondent to ransom and extort money from them. All that was put to Mr Binns was that he decided to use the Winnebago name and logo because he wanted to obtain the benefit of the respondent's reputation in the United States by the association of the name and logo with the respondent. Leaving aside any other evidence there is a substantial gap between Mr Binns taking the name and logo because he wanted to trade on the respondent's reputation in the United States (or Australia if the respondent's reputation extended to Australia at the time, a separate issue) and Mr Binns wanting at best to prevent the respondent from entering the market here and at worst extort money from the respondent if the respondent wished to do so. The other undisputed evidence discloses why these findings were not open. The fact is the respondent not only had not entered the Australian market when Mr Binns decided to use the name and logo, it had no intention of doing so. The primary judge recorded at [114] that in November 1992 the respondent was not willing to spend any money on taking action about the first appellant's activities in Australia because "[w]e are not selling our products there nor do we have any plans to do so". Mr Binns took the name and logo in, at the latest, 1982 (at [14]), ten years earlier. The respondent did not change its plans and begin to consider selling its products in Australia until 2008 (at [16]). If Mr Binns had intended in 1982 to prevent the respondent from entering the Australian market and to hold it to ransom if it did, the least that can be said is he faced a very long wait. But given that the respondent had not sold anything in the Australian market as at 1982 and had not evinced any intention of doing so the far more likely position is that Mr Binns simply knew the brand was very successful in the United States and wanted to take advantage of the respondent's reputation to help his business in Australia. Beyond that is mere speculation because nothing to the effect of the findings in issue at [128] was ever put to Mr Binns. 134 The findings at [155] to the effect that Mr Binns took a calculated risk that he would have to rebrand the first respondent's vehicles if the respondent ever wished to enter the Australian market involve different considerations. Mr Binns said he believed the settlement agreement allowed him to continue to use the name and logo and to register a trade mark in Australia. He accepted he was wrong about the trade mark registration given the terms of the agreement. But otherwise he said the first appellant has invested a lot of money since 1992 on the basis of the belief that he could operate the business in Australia "without any problem". His answer that he "didn't think of it between those two times", which the respondent emphasised, plainly relates to the interpretation of cl 6 of the agreement which had been put to him in the preceding question. There cannot be much doubt that, insofar as his subjective views might be relevant, Mr Binns thought the agreement allowed him to continue to conduct his business in Australia without any problem and he gave little or no thought to what the respondent might be entitled itself to do under the agreement. If that constitutes taking a "calculated risk" then it is apparent that not much calculation on Mr Binns' part was involved. It is hardly surprising that Mr Binns' focus would be on what he could do rather than what the respondent might in the future do given that the respondent had shown no sign at any time of wishing to enter the Australian market and, as the respondent's records disclose, had no intention of doing so at that time. 135 What then of the terms of the agreement itself? They are set out at [110] of the primary judge's reasons but cll 1, 2, and 6 are critical and are repeated below. 1. Binns and Australian Company hereby agree: not to use the Proprietary Marks in the United States of America, or in any country other than Australia; not to apply for registration of the Proprietary Marks in any country; and not to associate themselves or related entities with Winnebago or its products now or in future. 2. For the period which Binns and Australian Company comply with all of the terms of this Agreement, Winnebago agrees not to take any legal action in the United States of America against Binns or Australian Company for their use of the Proprietary Marks, their passing off or their attempts to trade on the reputation and goodwill of Winnebago. … 6. This Agreement does not address, impact upon, or relate in any way, manner or form to the use or ownership of the Proprietary Marks in Australia or to any rights relating to the Proprietary Marks based on reputation or use under any statute or at common law in Australia. By entering into this Agreement, Winnebago does not expressly or impliedly acknowledge that Australian Company has any rights of any nature whatsoever to the Proprietary Marks in Australia. To the extent not expressed in this Agreement, this Agreement shall be without prejudice to the rights of Winnebago and Winnebago expressly reserves all of its legal rights. 136 Three things are immediately apparent. The prohibition on Mr Binns and the first appellant using the Proprietary Marks (the name Winnebago and the stylised "W" logo) applies to the United States and any country "other than Australia". The prohibition on the respondent not to take legal action against Mr Binns and the first appellant applies only to action taken in the United States. The agreement does not affect the use or ownership of or the rights relating to the Proprietary Marks in Australia. 137 Leaving aside the arguments about estoppel, it must be the case that at least as at the time of the settlement agreement its terms contemplated that Mr Binns and the first appellant would not be prevented by the respondent from using the marks in Australia. No doubt the respondent, like Mr Binns and the first appellant, was willing to enter into the agreement because it perceived some advantage of it so doing. The advantage to it was to ensure that the activities of Mr Binns and the first appellant were confined to Australia. Given that the respondent had not entered the Australian market and had no intention at that time of doing so the protections it gave to itself by agreeing not to take proceedings only in the United States and otherwise reserving its position under cl 6 must have been seen by it as sufficient. It necessarily follows that it was not only Mr Binns that took a calculated risk. The respondent also took a calculated risk. The risk Mr Binns took was that the respondent might one day enter the Australian market and then wish to assert whatever rights it had here in the name and logo against the first appellant. The risk the respondent took was that by the time it wished to enter the Australian market, if it ever so wished, it might be faced with, amongst other things, the type of arguments the appellants raised about the need for any remedy to be fashioned having regard to the respondent's conduct of sitting on its hands and effectively allowing Mr Binns and the first appellant to continue using the name and logo in Australia. For these reasons the findings at [155], while open, consider only one part of the context relevant to the discretionary exercise in respect of remedy, being the calculated risk taken by Mr Binns. In fashioning a remedy the calculated risk taken by the respondent also had to be considered. 138 For these reasons, irrespective of the resolution of any of the substantive issues, I have concluded that the remedies granted by the primary judge must be reconsidered. Grounds 1, 6, and 8 of the notice of appeal, accordingly, should be accepted. Otherwise my preliminary views are that the injunction in order 1 should be framed so as to permit the respondents to continue to carry out the specified activities provided that orders 8(a) to (c) are also complied with and order 3 (for delivery up of infringing materials) should be set aside, as should consequential orders 5 and 6. Nothing cogent was put by the respondent explaining why the proposed interim disclaimers would not be sufficient for the purposes of consumer protection, but I agree with Allsop CJ that the parties should be heard further on the framing of relief. Order 4 (cancellation of the registration) should remain, as should order 2 (rectification of the register). Registration (which necessarily encompasses the notion of renewal of registration) was procured in breach of the terms of the settlement agreement. On this basis also the question of the costs of the proceeding before the primary judge (order 10) should be reconsidered. Accordingly, order 10 should be set aside and the parties would have to be heard on the costs below and of the appeal. In summary, I thus agree with the course which Allsop CJ proposes.

Respondent's reputation 139 The first issue concerns the relevant date of use of the name and logo in Australia. The appellants contend that the primary judge erred when he found that the allegedly infringing conduct started in 1982 rather than in 1978 because although Mr Binns had used the name and logo since 1978 in a business he conducted with his wife under the business name "Winnebago Industries" (at [30]): there was no evidence of a sale or transfer of any business by Mr and Mrs Binns to Knott in 1982. The registered business name "Winnebago Industries" was transferred at that time but there was no evidence of any other relevant transaction. Mr and Mrs Binns, whether considered together or individually, have a legal personality which is separate from that of Knott. 140 This led to the primary judge concluding at [31] that: …the allegedly infringing conduct on the part of Knott commenced in early June 1982 when the business name "Winnebago Industries" was transferred to it. 141 However, there was evidence that after Mr and Mrs Binns used the name Winnebago from March 1978 and the logo from July 1978 the first appellant started doing so on 1 June 1982 the day after Mr and Mrs Binns ceased doing so. This is recorded in the Statement of Change of Names to whom Business Name is Registered lodged with the Corporate Affairs Commission (as it was) on 4 June 1982. In those circumstances it must be the case that, notwithstanding the lack of any sale of business agreement between Mr and Mrs Binns and the first appellant, the first appellant acquired the business which had existed for four years and thus acquired whatever goodwill and reputation that went with it. This so irrespective of the family trust arrangements by which the first appellant is the trustee of a trust for the Binns family. The relevant date, accordingly, is July 1978. It follows that ground 3 of the appeal must be accepted. 142 There was no dispute that as at July 1978 the respondent had made no sales in Australia and had no intention of entering the Australian market. The respondent had a substantial reputation in the United States, Canada and the United Kingdom before 1978 and its reputation continued to grow thereafter, with its sales areas expanding to Europe and Japan in 1988 and other countries subsequently. The respondent first had a real interest in selling its products in Australia in 2008. 143 The primary judge (at [92]) found that Mr Binns in 1978: … had an expectation that there would be, amongst those interested in either purchasing or renting RVs in Australia, a good smattering of persons who were aware of Winnebago and its RVs. He accepted that, in particular, persons who had travelled overseas were likely to have the relevant awareness. 144 At [125] to [128] the primary judge set out the evidence which led to the conclusion at [130] that "a substantial number of potential customers looking to buy or rent RVs in Australia were aware of Winnebago and its RVs as at 1 June 1982 with the consequence that such persons were likely to be deceived thereafter into thinking that the business conducted by Knott by or under the Winnebago name was truly the business of Winnebago and that the RVs manufactured in Australia by Knott were RVs manufactured by Winnebago". The evidence consisted of: (i) the inference that some visitors to Australia and some Australians visiting overseas would have come into contact with the respondent's business by seeing some of the many publications about the respondent's business between 1962 and 1982 (at [125]), (ii) the inference that some visitors to Australia and some Australians visiting overseas would have been or become aware of the respondent's products and that by reason of their travels news of the respondent's products would have spread into Australia between 1962 and 1982 (at [126]), (iii) some advertisements in Australia identified the respondent's vehicles including one offered for sale by a business specialising in such vehicles (at [127]), and (iv) Mr Binns' evidence as described at [128]. 145 While I have set out above those parts of the finding at [128] with which I do not agree there is no doubt that it was open on the evidence to infer that Mr Binns took the name and logo to trade not only on the respondent's reputation in the United States, but also its reputation in Australia. Relevant to this inference is the nature of the potential customers for such products. There was no dispute that the products involve substantial expenditure and it is obvious that they appeal to a particular slice of the tourism industry - those who wish to travel around effectively taking their home on wheels with them. This is a very particular market for both rentals and sales. These are the relevant consumers for the purpose of determining the sufficiency of the respondent's reputation in Australia as at July 1978 (Conagra Inc v McCain Foods Australia Pty Ltd (1992) 33 FCR 302 at 344, 346 and 372). Once this is taken into account it is apparent that the primary judge's conclusion is equally sustainable as at 1982 and 1978. By 1978 the respondent had a substantial business and associated reputation particularly in the United States, but also in United Kingdom and Canada. When this is considered together with the fact of international travel between Australia and those countries, even at the levels before 1978, which were in evidence, and the nature of the people likely to be the potential customers of the respondent, the primary judge's conclusion of the spill-over of the respondent's reputation into Australia appears sound. The appellants' challenges to the reasoning process of the primary judge, leaving aside the relevant date of 1978, are artificial and unpersuasive. 146 For these reasons grounds 2 and 4 of the appeal should be rejected.

Estoppel, acquiescence and laches 147 The estoppel claim cannot be sustained for a number of reasons. The only representation which the settlement agreement, properly construed, could have conveyed is that, as at the date of the settlement agreement and thereafter at the respondent's pleasure, the use of the name and logo would not be the subject of action by the respondent. Everything Mr Binns did thereafter was done in circumstances where he knew or should reasonably have known that the respondent had reserved to itself the right to take action in Australia if and when it so chose. The words "other than in Australia" in cl 1 have to be read in the context of the agreement as a whole including cll 2 and 6 which disclose the rights the respondent was reserving to itself. In these circumstances, the passage of time and the respondent's knowledge of the first appellant's activities cannot give rise to any estoppel as against the respondent. In the face of the terms of the agreement, and no other relevant conduct by the respondent on which the first appellant might have relied, it is not the case that the continuing non-action "gave rise to a representation that [the respondent] would not exercise any rights it may have had". This is precisely the representation the respondent did not make by the terms of the agreement and which those terms ensured were not made by reason of nothing more than non-action by the respondent thereafter. It might be different if the respondent had done something after the agreement (for example, entering the Australian market and not taking action against the appellants) but non-action does not suffice for the purposes of this case in the face of the agreement. What the circumstances of continuing non-action do give rise to are the discretionary considerations which shape the appropriate relief as discussed above. 148 There are a number of reasons why the estoppel cannot be made out. They are conveniently recorded in the respondent's submissions which I adopt for this purpose as follows: First, the alleged representation was not a clear and unequivocal one of the kind the authorities require: Legione v Hateley (1983) 152 CLR 406 at 435-7 per Mason and Deane JJ; Bunbury Foods Pty Ltd v National Bank of Australasia Limited (1984) 153 CLR 491 at 501 -2 per Mason, Murphy, Wilson, Brennan and Dawson JJ. There were plausible explanations for Winnebago not suing Knott or Mr Binns other than that it had decided to waive its rights. One obvious explanation is that Winnebago's commercial circumstances at the time did not warrant it incurring significant costs on litigation against Knott or Mr Binns. Secondly, the primary judge's findings, which the appellants have not challenged, mean that there could not have been any detrimental reliance on the alleged representation, even if it was made. As noted at the start of this outline, his Honour found that, in entering into the Settlement Agreement and subsequently, Mr Binns knew "there was always the risk that, if Winnebago wished to enter the Australian market, Knott would have to rebrand its products and its business" and "[n]o doubt … took a calculated risk in this regard, preferring to gain as much revenue and advantage from continuing to conduct business in the same way as Knott, at his direction, had done since 1982… Thus, far from relying on any representation of the kind alleged, Mr Binns believed that none had been made and took a calculated risk to cause Knott and the other appellants to continue using the Winnebago marks, despite knowing that Winnebago might sue in relation to that conduct. Thirdly, there was no evidence to suggest that Winnebago knew or intended Knott to act or abstain from acting in reliance on the alleged representation, and indeed the evidence was inconsistent with this as it showed Winnebago seeking to have it made clear that the Settlement Agreement would not preclude it from suing Knott or Mr Binns in Australia at some future date... For this reason too, the estoppel claim could not succeed: Waltons Stores (Interstate) Ltd v Maher (1988) 164 CLR 387 at 429 per Brennan J. 149 For the same reasons the claims of acquiescence and laches, as the appellants expressly accepted below, can rise no higher than the claimed estoppel. 150 For these reasons grounds 5 and 6 of the appeal cannot be accepted.

Notice of contention 151 Ground 1 of the notice of contention is to the effect that the primary judge should have found that the respondent's reputation was sufficient for it to maintain its causes of action for passing off and contravention of ss 52 and 53(c) of the Trade Practices Act 1974 (Cth) (ss 18 and 29(1)(g) of the Australian Consumer Law). For the reasons already given, I agree. 152 Ground 2 of the notice of contention is that the primary judge should have found the first appellant breached the settlement agreement. For the reasons given I also agree with this contention and that the registration by the first appellant of the trade mark must be cancelled but I do not agree that this breach can lead to the remedy of restraining the appellants' from using the name and logo provided that an adequate disclaimer is also used. As a result it is unnecessary to consider the appellants' restraint of trade argument.

CONCLUSIONs 153 The course proposed by Allsop CJ should be adopted. I certify that the preceding thirty-four (34) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jagot.

Trade Practices Act 1974(Cth)ss 52, 53(c), 53(d)

Trade Marks Act 1995(Cth)ss 43, 57, 72(3), 88, 88(2)(a), 88(2)(c), Pt

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