Winnebago Industries, Inc v Knott Investments Pty Ltd [2012] FCA 785 | Case summary

Winnebago Industries, Inc v Knott Investments Pty Ltd [2012] FCA 785 | Case summary | Zoe

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REASONS FOR JUDGMENT 1 Winnebago Industries, Inc (Winnebago) is a corporation based in the United States of America. It was founded by the late John K Hanson and was incorporated in Iowa in February 1958 under the name "Modernistic Industries of Iowa". 2 In 1959, Winnebago began manufacturing "Winnebago Teepee" travel trailers. It created the Winnebago logo (which is the Winnebago name represented in a stylised manner) and the W logo (the Winnebago logos) at that time. In February 1961, Winnebago changed its name to "Winnebago Industries, Inc" and adopted the stylised W logo as its symbol (the flying W logo). "Winnebago" is the name of the local US county in which Forest City, Iowa, is located and is the name of the river that runs through that city. It is also the name of a native American Indian tribe which inhabited the area around Forest City prior to white settlement. Forest City, Iowa, is the place where Winnebago has its manufacturing facility. I shall refer to the Winnebago name, the Winnebago logos and the flying W logo collectively as "the Winnebago marks". 3 I now set out the current form of the Winnebago logo: 4 The flying W logo appears thus: 5 In 1966, Winnebago commenced manufacturing recreational vehicles (RVs) and has been manufacturing them continuously ever since. Since the early 1960s, it has used the Winnebago marks, or some of them, in connection with the promotion and sale of vehicles manufactured by it. 6 In 1972, Winnebago registered the Winnebago logo as a trade mark in the United States of America. In 1973, it registered the Winnebago name as a trade mark in the United States of America. 7 In 1973, Winnebago applied to register the Winnebago logo in Australia. That application was refused in 1975 on the ground that, in accordance with the law in Australia at that time, the word "Winnebago" was a geographic name and could not be registered as a trade mark in Australia. 8 Throughout the 1960s, 1970s, 1980s and, indeed, subsequently, right up to the present time, Winnebago has grown its reputation as a manufacturer of quality RVs. It has sold RVs in the USA, UK, Europe and Canada. 9 Until 2010, it had not exported RVs to Australia. Since that date, however, it has become interested in doing so. 10 In 1963, Bruce Arthur Binns, who is the principal of the first respondent (Knott), visited the USA, Canada and Mexico as a tourist. At the time, he was a young man in his early 20s. When visiting the USA and Canada on this occasion, Bruce Binns observed RVs manufactured by Winnebago plying the highways of both countries. After his return to Australia in 1964, commencing in the mid-1960s, Bruce Binns began manufacturing "slide-ons". Slide-ons are crude RVs comprising a caravan type construction attached to a standard utility or truck chassis. They are not purpose-built RVs designed from scratch. 11 In late October 1967, Bruce Binns incorporated or acquired Knott. Knott was to be used as a landholding entity. It was to acquire land upon which Bruce Binns intended to build factory premises to be used for the manufacture of RVs in Australia. The manufacturing entity was to be Bruce A Binns Pty Ltd (which was later renamed "Freeway Camper Company Pty Ltd" (Freeway)). 12 After a modest start in 1974 and 1975, Freeway's production rose to about six RVs per week in 1976. At this time, Freeway manufactured various types of RV: caravans, tent trailers, slide-ons and motorhomes. 13 The business of Freeway failed. It was wound up on 31 October 1977. 14 At some point thereafter, Knott began to manufacture and sell RVs under the Winnebago name. It also used the Winnebago logos. In his evidence before me, Bruce Binns asserted that Knott's use of the Winnebago marks commenced in about mid-1978. Winnebago contended that it was later - a date in 1982. 15 In May 1985, Winnebago received a letter from an American citizen and resident (Mr Smith) who had become aware of Knott's activities in Australia under the "Winnebago" name from an RV rental business operating in Boulder City, NV, USA. At this time, when informed of Mr Smith's letter, senior executives at Winnebago regarded Knott's use in Australia of the name "Winnebago" as "… a blatant infringement of [Winnebago's] trade mark …". Nonetheless, Winnebago did very little about this infringement until 1991. Negotiations took place in late 1991 and early 1992 which culminated in an accommodation of sorts being reached between Winnebago and Knott. In September 1992, a document styled "Settlement Agreement" was executed by Winnebago, Bruce Binns and Knott (the Settlement Agreement). Thereafter, Knott continued to exploit the Winnebago marks in Australia in connection with RVs manufactured and sold by it in Australia. It will be necessary later in these Reasons to consider the circumstances in which the Settlement Agreement came to be entered into. 16 In recent years, commencing in about 2008, Winnebago began to show real interest in manufacturing RVs for import and sale into the Australian market. For that reason, in 2010, it revisited its consideration of Knott's activities in Australia. 17 On 14 October 2010, after making demand upon Knott that it cease using the Winnebago marks and after being rebuffed by Knott, Winnebago commenced this proceeding. That is, Winnebago finally took Court action against Knott 25 years after it first became aware of the conduct of Knott in using the Winnebago marks in connection with the manufacture and sale of RVs in Australia. The fundamental question to be determined at this stage of this proceeding is whether Winnebago is entitled to injunctive relief restraining Knott and the other respondents from using the Winnebago marks as well as certain ancillary relief (other than pecuniary relief). 18 As I have already mentioned, Knott is the first respondent in this proceeding. The second to twelfth respondents (Knott's dealers) are dealers with whom Knott has contracted for the distribution and sale of RVs manufactured by it.

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Causes of Action in Passing Off, Contraventions of the Trade Practices Act 1974 (Cth) and Contraventions of the Australian Consumer Law 20 These three causes of action rely upon the same essential facts and matters. They are: (a) Winnebago carries on the business of manufacturing, promoting the sale of and selling RVs under: (i) The name and trade mark "Winnebago"; (ii) The flying W logo; and (iii) The Winnebago logo. (b) It has carried on that business for over 50 years in the USA and Canada. It has also carried on that business in the UK, Europe, Mexico and other places for upwards of 40 years. It has a very substantial reputation in that business and in the Winnebago marks. (c) Winnebago has a very large business. It had reached a substantial size by the mid-1970s. Winnebago has advertised and promoted its business consistently, persistently and extensively since the early 1960s. (d) By no later than the mid-1970s, and continuing at all times thereafter, the Winnebago name, the Winnebago logo and the flying W logo have come to signify to the trade and to the public (or the relevant section of the public) in Australia, Winnebago's RVs. Persons acquiring or seeking to acquire RVs under or by reference to the Winnebago marks, or any of them, or any brand name closely similar to the name "Winnebago", or any of them, expect and intend to acquire RVs manufactured by Winnebago and not RVs manufactured by any other person or entity. (e) By no later than the mid-1970s, Winnebago had a substantial and valuable reputation and goodwill in the Winnebago marks throughout Australia. (f) Bruce Binns and his wife purchased the Victorian registered business name "Winnebago Industries" in 1978. In March 1997, Knott applied for and subsequently obtained registration of the Winnebago name as a trade mark in Australia (the Australian mark). (g) By using the Winnebago marks in connection with the manufacture and sale of RVs by it in Australia after 1978, or perhaps after 1982, without Winnebago's consent or approval, Knott has passed off its business and products as those of Winnebago and has also contravened ss 52, 53(c) and 53(d) of the Trade Practices Act 1974 (Cth) (the TPA) (for conduct up to 1 January 2011) and ss 18, 29(1)(g) and 29(1)(h) of the Australian Consumer Law (the ACL) (for conduct thereafter). Winnebago also alleges that, by acting as it has, Knott has made a number of false representations in trade or commerce. In par 44 of its Amended Statement of Claim, Winnebago alleges that Knott represented that: (i) Knott is Winnebago or is a corporation which is related to Winnebago or otherwise has some connection in trade with Winnebago; (ii) Knott's RVs are manufactured by or under a licence from Winnebago or with Winnebago's approval or otherwise have some connection in trade with Winnebago; (iii) Knott's dealers are authorised dealers or representatives of Winnebago or of a corporation which is related to Winnebago or of a corporation which otherwise has some connection in trade with Winnebago; and (iv) The RVs promoted, advertised and sold by Knott and its dealers are vehicles manufactured by or under licence from Winnebago or with its approval or otherwise have some connection in trade with Winnebago. (h) Winnebago contends that, in the alternative, Knott should be held liable under the TPA and the ACL as an accessory in respect of the conduct of its dealers in offering for sale, in advertising and promoting for sale and in selling RVs under or by reference to the Winnebago marks.

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The Issues 27 On 25 November 2010, I made an order that Winnebago's entitlement to pecuniary relief (if any) and the quantum of such remedies be determined separately from and after the trial of all questions relating to the respondents' liability (if any) and Winnebago's claim for non-pecuniary relief which was fixed to commence on 30 May 2011. 28 These Reasons for Judgment, therefore, address all questions of liability as well as Winnebago's claims for non-pecuniary relief. Winnebago's claim for corrective advertising was not addressed in submissions. I do not know whether it is pressed. I will not deal with that claim in these Reasons for Judgment. 29 There is no dispute between Winnebago and the respondents that Winnebago has established a significant reputation and goodwill in the Winnebago marks in the USA, the UK, Europe and Canada and had done so by the mid-1960s. 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. 32 One or more of Knott's dealers began using the Winnebago marks in November 1984. 33 The use by Knott and its dealers of the Winnebago marks has been extensive. Those marks have been reproduced in promotional and advertising material; on letterhead, invoices, business cards and other corporate documentation; signs; and in magazines. Those marks have also been emblazoned on the RVs themselves. 34 The following issues arise: (a) Did Winnebago have a sufficient reputation in Australia as at 1 June 1982 (ie prior to the commencement of the allegedly infringing conduct) to sustain the causes of action for passing off and for misleading and deceptive conduct within the meaning of that phrase in the TPA and (later) in the ACL? (Issue 1). (b) Did Knott and its dealers represent that it and its dealers had some trade connection with Winnebago? If they did, they contravened s 53(c) and s 53(d) of the TPA and the equivalent sections in the ACL because it was common ground in the proceeding that, if representations to that effect were made, they were false. (Issue 2). (c) Did Winnebago consent to or authorise the use of the Winnebago marks by the respondents since at least November 1991? (Issue 3) (d) Is Winnebago estopped from pursuing its claims for relief? (Issue 4) (e) Is Winnebago precluded from pursuing its claims for relief by laches, acquiescence and delay? (Issue 5) (f) Is that part of cl 1 of the Settlement Agreement by which Knott covenanted not to apply for registration of the Winnebago marks in any country void as an unreasonable restraint of trade? (Issue 6) (g) Did Knott breach the Settlement Agreement? (Issue 7) (h) Are Winnebago's claims for relief out-of-time or time-barred? (Issue 8) (i) Is Winnebago entitled to relief for infringement of its copyright in the Winnebago marks? (Issue 9) (j) Should the Australian Trade Mark Register be rectified by the cancellation and the removal of the Australian mark? (Issue 10) 35 Many of the facts which each side of this dispute tendered in evidence before me were not in dispute. Some matters were hotly contested. In the end, there were only three factual matters of importance which were disputed. These were: (a) Whether, as contended by Bruce Binns, he did not intend to trade off the goodwill and reputation of Winnebago when he began to use the Winnebago marks in Australia and when he caused Knott and its dealers to do so from 1 June 1982. (b) Whether Winnebago had any, or, alternatively, a sufficient reputation in Australia prior to 1 June 1982 which could sustain the relief claimed by it in the present proceeding. (c) Whether, in late 1991, Bruce Binns had a conversation with John K Hanson at a trade show in Louisville, Kentucky, USA in which Mr Hanson, on behalf of Winnebago, agreed that Knott and its dealers could continue to use the Winnebago marks in Australia provided that they promised not to do so on RVs exported from Australia and provided they agreed not to attempt to register any of the Winnebago marks outside Australia. 36 I propose to address these matters in the next section of these Reasons for Judgment as part of my exposition of the facts. 37 Winnebago's case that Knott and its dealers have passed off their business as being Winnebago or connected with Winnebago and that those persons have passed off RVs manufactured by Knott as having been manufactured by Winnebago essentially turns on whether Winnebago can establish a sufficient reputation in Australia as at 1 June 1982 (Issue 1). For, if it can establish such a reputation, the passing off case will be made good. The same considerations apply to the statutory causes of action based upon ss 52, 53(c) and 53(d) of the TPA and ss 18, 29(1)(g) and 29(1)(h) of the ACL. Once a sufficient reputation is established as at 1 June 1982, there is no doubt that consumers in Australia will be misled or will be likely to be misled by the conduct on the part of Knott and its dealers whereby it has represented that it has legitimate trade connections with Winnebago or is Winnebago by using the Winnebago marks. 38 At various times, Knott also expressly represented to its dealers and in certain publications that it did have a trade connection with Winnebago and that its business was also connected with Winnebago. These representations were false at the time that they were made. Winnebago is entitled to injunctive relief by which the respondents are restrained from repeating such false representations.

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Selection of the Winnebago Name and Creation of the Winnebago Logos 39 Paul David Hanson, the son of Winnebago's first president and founder, John K Hanson, gave evidence as to the circumstances in which the Winnebago name was selected for the business which his father had founded and also as to the circumstances in which the Winnebago logos were created. He said that, early in 1959, his father, his mother and he were congregated around the family table discussing possibilities for the name and logo that would appear on the travel trailers and in connection with the business that Winnebago had commenced the year before. 40 In the presence of his wife and son, John K Hanson said that he wanted a name that signalled travel but also one which was distinctive and would look good on the trailers. He then suggested "Winnebago". He thought that the selection of Winnebago was apt because it called to mind the name of the local native American Indian tribe as well as the river running through Forest City where Winnebago was based. It was also the name of the local county in which Forest City was located. 41 On this occasion, John K Hanson then drew various sketches depicting possible logos. Included within those sketches were logos which closely corresponded with the original versions of the Winnebago logos. Those sketches were not tendered in evidence. 42 One or two of the sketches drawn by John K Hanson on this occasion were provided by him to the production manager at Winnebago. The evidence did not establish which sketches were provided. That person prepared more polished versions of those sketches which were then used to spray paint the Winnebago name and the Winnebago logos on the side of travel trailers. 43 This was the process by which the first version of the Winnebago logos was produced. 44 Over the years, the original Winnebago logos have undergone minor changes. 45 The typeface used in the Winnebago logos is similar to the "Futura" typeface and its variants, designed by Paul Renner and described in the Encyclopaedia of TypeFaces published in 1953. In that publication, that typeface is described as "one of the popular German sans [serif typefaces]". 46 In both the Winnebago logo and the flying W logo, the W has been stylised by the addition of horizontal lines extending from it. In the current version of the Winnebago logo, the typeface has been adapted by being placed on an angle (except for the upper case "W") and has been bolded. 47 The evidence given by Paul David Hanson was not seriously disputed. I accept it. The real challenge to Winnebago's copyright case involved arguments which did not involve any challenge to this evidence.

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Spillover Reputation 61 As at late March or early April 1978, when Mr and Mrs Binns commenced to use the Winnebago marks, Winnebago had never advertised its RVs in Australia or exported any RVs to Australia for sale in Australia. 62 Winnebago submitted that, given the size of Winnebago's reputation and that of its RVs in the USA, the UK, Europe and elsewhere, it is inevitable that that reputation spilled over to Australia from an early time in the history of Winnebago. In general terms, the submission was that many Australians travelled to the USA, the UK and Europe in the relevant period. In particular, the submission was that there was a significant increase in the number of Australians travelling to those places in the period commencing in the late 1960s and continuing right up to the present day. It was inevitable, so the submission went, that Australians would have become aware of Winnebago and Winnebago RVs during the course of their travels. There is considerable force in these submissions. RVs are, after all, one of the means by which holidaymakers may enjoy their vacation. They are intimately connected with the vacation itself. 63 In this regard, it is also important to remember that RVs are a relatively expensive item which appeals to only a section of the Australian public, not to the public generally. That section may be broadly defined as those persons wishing 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. 64 In support of its submissions concerning the spillover of Winnebago's reputation, Winnebago established that a considerable number of international publications in which its RVs appeared or were referred to were accessible in Australia. There was no evidence, however, of the circulation figures for those publications. 65 The NSW State Library has held subscriptions for the following publications in respect of the following periods: (a) The New York Times Since 1857; (b) The Wall Street Journal Since 1889; (c) The Washington Post From 1974 to 2007; (d) Time Magazine Since 1936; (e) Popular Since Since 1950; (f) The Times Since 1788; and (g) National Geographic Magazine Since 1959

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66 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. 67 Winnebago also submitted that its exposure in film and on television had given it considerable exposure in Australia. The only film in which a Winnebago RV appeared prior to late March 1978 was Escape to Witch Mountain. This film was screened in Sydney cinemas between 16 August 1975 and 4 September 1975 and again in the lead up to Christmas 1975. The film features a Winnebago RV quite prominently. The RV in the film bore the Winnebago logo in green paint down the side of the vehicle. The appearances of the vehicle in the film were quite memorable because, in the film, the vehicle was capable of becoming airborne and did so on several occasions. There is no evidence as to the number of persons who saw that film in 1975. 68 In the context of its submissions concerning Australians' travelling habits, Winnebago tendered evidence of the numbers of people who travelled between Australia and countries in which Winnebago had a considerable presence throughout the relevant period. 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. 69 It was submitted that it was highly probable that a significant number of those travellers came into contact with Winnebago's business and its RVs whilst away and brought knowledge of its business and RVs back to Australia. 70 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. Anthony Howard Wilson, who gave evidence on behalf of Winnebago, was a sales dealer and rental agent for Winnebago in the UK for some years up to 1978. In that year, he migrated to Australia. As a consequence, he brought with him knowledge and awareness of Winnebago's reputation in both the UK and elsewhere.

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Bruce Binns' Explanation for Choosing the Name Winnebago 87 In his affidavit evidence, after dealing with the collapse of the RV business conducted by Freeway, Mr Binns said: 23. I decided in around early 1978 that I would manufacture and supply new motorhomes under a new name. I recall that I wanted to use one of the names which I remembered from my travels in the USA (and which are identified in paragraph 8 above). From my involvement in the industry I knew that Fleetwood and Coachmen were already being used in Australia. 88 The three names which had been mentioned in paragraph 8 of Bruce Binns' affidavit were Fleetwood, Winnebago and Coachmen. 89 In his affidavit evidence, Bruce Binns said that he made enquiries about the name "Winnebago" and discovered that it had been registered as a business name in Victoria by one Gerry Ryan. He said that he arranged with Mr Ryan to purchase that business name in 1978. 90 Senior Counsel for Winnebago cross-examined Bruce Binns as to his reasons for selecting the "Winnebago" name under which to trade after the collapse of the Freeway business. 91 It was suggested to Bruce Binns in cross-examination that he had chosen to use the "Winnebago" name so that he could get the benefit of its goodwill and reputation in Australia for the benefit of the business which he was about to undertake of manufacturing RVs here. Bruce Binns accepted that he simply copied the Winnebago name and the Winnebago logos. He said that, although he understood that the name and logo of a business operates to indicate a distinct corporate personality, he believed that, because Winnebago was not operating in Australia at that time, there would be no objection to his using the Winnebago name and the Winnebago logos. He did not disclose whether his knowledge of Winnebago had increased since 1963. He was, after all, in the trade in Australia and must have had a very good knowledge of Winnebago and its products by 1978. During the course of the cross-examination of Bruce Binns, the following exchange occurred: Thank you. And you chose the name Winnebago and its logo because you wanted to obtain the benefit of an association in the minds of consumers with the Winnebago brand in the United States, correct?---No, it was definitely not. Well, why do you say you chose the name and logo of the American Winnebago company?---Well, we originally - as I have mentioned, we originally had the four names that I had remembered and the others were being used and that was not the last straw, but it was one of the last straws. And I was able to buy the name and then we used it under that, but we had no intention, as you say, to trade on the Winnebago American name in America. I'm sorry. My question to you, Mr Binns, is why did you choose the name and logo of the American Winnebago company if it was not to obtain the benefit of an association in the minds of the consumers with the Winnebago brand in the United States?---I chose the name because they were a respected company in America and they produced a good product. Quite. And you wanted to associate yourself---?---I didn't want to associate myself. I never have. Let me finish my question, Mr Binns. You wanted to associate your business with that successful business that you observed in the United States, correct?---No, I didn't want to associate it with that particular business. We were operating in Australia. And you wanted your consumers to associate your product with the product made by the Winnebago company in the United States, correct?---No. We were operating in Australia and we had no connection with the American company and we never have. But you wanted people to think you did, correct?---I - no. It is obvious, isn't it, Mr Binns?---I don't think so. Thank you. And have you now given the best answer that you feel you possibly can to my question of why you chose the Winnebago name if it was not to try to obtain the benefit of an association in the minds of consumers with the American Winnebago company?---I would consider saying that at that time when we bought the name in '78 that Winnebago in Australia would not have been recognised that much. And yes, I used the name because it was a good company in America. Well, when you say you didn't think the name Winnebago would be recognised in Australia that much, you certainly knew, didn't you, that there were a significant number of people in Australia who knew about the Winnebago brand in the States?---Only the people that would have travelled and only the people in the industry itself. I think, you know, it wasn't a common name used in Australia. And you would add to that list, would you not, the people who read the Australian magazine Caravan World?---If they picked up that couple of little items they would recognise it, yes. Thank you. And you would include in that, would you not, American tourists who came to Australia, correct?---Well, they would know the name. Of course they would. Thank you. And you were aware that Winnebagos were available to hire in the United Kingdom to Australian travellers there in the 1970s, correct?---I knew of Wilsons, yes. Yes. Thank you. And Wilsons made no secret of the fact in Australia that they were seeking to promote the hire of Winnebago vehicles in the United Kingdom?---Yes. Thank you. And you would accept, would you not, that as you understood it in the 1970s there was a significant number of people in Australia who would have known about the Winnebago brand in the United States?---I couldn't justify that; I wouldn't know. I see. But it is certainly the thing that motivated you to choose the name Winnebago, isn't it? I don't believe so. 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. 94 This finding is supported by an advertisement placed by Knott in the June 1995 edition of Australian Caravan World. That advertisement contains the following: You'd expect nothing less from Winnebago, the world's most respected name in luxury motorhomes. 95 Bruce Binns was cross-examined about this advertisement. He was not able to explain why Knott had made a reference which was clearly a reference to Winnebago in an advertisement for Knott's products in Australia. 96 In addition, there was evidence of a presentation given by Max Mayo to various Knott's dealers. In that presentation, Mr Mayo had specifically mentioned Winnebago as the Rolls Royce of RV manufacturers. (He did not use the words "Rolls Royce", but used words conveying a similar sentiment.) 97 In cross-examination, Bruce Binns was directly confronted with the proposition that Knott had deliberately encouraged dealers to present its RVs as products produced with the blessing of Winnebago. He denied that Knott was doing that. In this part of his evidence, Bruce Binns was reduced to asserting that black was white by attempting to interpret the text of the dealer presentations in a way that the text could not conceivably bear by suggesting that very obvious references to Winnebago and its RVs were in fact references to Knott and RVs produced by Knott. I find this evidence unconvincing and designed to assist the respondents' case. 98 These attempts to explain away the palpable exploitation by Knott of a pretended association between Knott and Winnebago did not reflect well on Bruce Binns' credit. I do not accept the evidence which he gave in this regard.

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The Dealings Between Winnebago and Knott 99 As I have already mentioned, it was in May 1985 that Winnebago first became aware that Knott was utilising its name and logos in Australia. 100 In 1988, Bruce Binns travelled to the RV Trade Show in Louisville, Kentucky, USA. On that occasion, he met Mr Gernetzke, introducing himself as "President of Winnebago Industries". He passed across to Mr Gernetzke a business card upon which that material was printed. 101 In December 1988, Mr Beebe, General Counsel of Winnebago, took steps to take advice from Winnebago's external lawyers as to whether or not Knott could be restrained from utilising the Winnebago name and Winnebago logos in Australia. Having ascertained that it was not possible, at that time, to prove that Winnebago had sold RVs in Australia prior to 1978, Mr Beebe formed the view that there was nothing that could be done. 102 In August 1991, Mr Beebe made a further attempt to see what could be done to prevent Knott from continuing to use the Winnebago name and the Winnebago logos in Australia. 103 In November 1991, after retaining local Australian lawyers, Winnebago instructed those lawyers to write a letter of demand to Knott demanding that it cease using the Winnebago name and the Winnebago logos in Australia. 104 In his evidence, Bruce Binns said that, later in November 1991, he again attended the RV Trade Show in Louisville, Kentucky, USA and, on this occasion, introduced himself to John K Hanson. His version of events is that, on this occasion, he asked Mr Hanson if he (Hanson) would be interested in manufacturing Winnebago RVs for importation into Australia. Mr Hanson is alleged to have said that Winnebago was not interested in doing that because of the difficulty in complying with Australian design rules as well as the low volumes such a project would yield. According to Bruce Binns, he then asked why Winnebago objected to Knott's use of the Winnebago name and the Winnebago logos in Australia. John K Hanson is alleged to have said that he had no issue with Knott using the Winnebago name and the Winnebago logos in Australia but wanted Knott to agree not to use the Winnebago name on any motorhomes exported outside Australia and not to register the Winnebago trade marks outside Australia. Bruce Binns said that, on this occasion, he agreed to that which was requested of him and that, therefore, a settlement of the dispute which had arisen between Winnebago and Knott was achieved in the conversation with John K Hanson. 105 There was evidence tendered before me as to the interaction between the lawyers retained by Knott, Gates Moffitt, and Winnebago's lawyers in Australia which took place from November 1991 until September 1992 when the Settlement Agreement was signed. There is nothing in that interaction which could be regarded as corroboration of Bruce Binns' evidence that he had had a conversation with John K Hanson along the lines of the conversation to which I have referred at [104] above. 106 Knott called Raymond Cecil Gee to corroborate the conversation which Bruce Binns said he had with John K Hanson at the RV Trade Show in Kentucky in late November 1991. The evidence of Mr Gee need not be described in any detail. He did not witness the conversation. Rather, he testified that, after Bruce Binns had apparently spoken to John K Hanson, he told Mr Gee that "everything went OK". The evidence of Mr Gee hardly corroborates the evidence of Bruce Binns in any critical respect. 107 It was submitted on behalf of Winnebago that I should reject Bruce Binns' evidence as to the conversation which he said took place at the RV Trade Show in Kentucky in late November 1991. It was submitted by Winnebago that Mr Gee's evidence did not corroborate Bruce Binns' version; that the conversation was never mentioned in any correspondence between the solicitors in late 1991 and in 1992; that in the solicitors' letter dated 11 December 1991 it is suggested that Bruce Binns did not attend that Trade Show; that the instructions provided to Gates Moffitt by Bruce Binns did not reflect the terms of the conversation as he would have me understand it; and that there is no evidence that any of the relevant executives at Winnebago were ever told of the conversation. 108 I think that there is considerable force in these submissions made on behalf of Winnebago. Furthermore, the essence of the conversation is quite inconsistent with the terms of the Settlement Agreement. In my judgment, Bruce Binns has invented the conversation in an endeavour to explain away difficulties which he sees for his case presented by the terms of the Settlement Agreement. In addition, he pretended in his evidence that he did not understand the Settlement Agreement although it is quite clear that he examined it closely and took advice in relation to it to the extent that he required. 109 I do not accept that any conversation along the lines alleged by Bruce Binns took place with John K Hanson at the November 1991 RV Trade Show in Kentucky. I reject the evidence of Bruce Binns in which he testified that such a conversation occurred and I reject his evidence that he struck some binding compromise with John K Hanson in late November 1991. If it matters, Bruce Binns accepted that he did not have a binding arrangement until the Settlement Agreement was executed.

[45]

The Settlement Agreement 110 The text of the Settlement Agreement, which is dated 16 September 1992, is in the following terms (omitting the formal execution clauses). SETTLEMENT AGREEMENT This Agreement is between Winnebago Industries, Inc., P.O. Box 152, Highways 9 & 69, Forest City, Iowa, 50436, United States of America ("Winnebago") and Bruce A. Binns, whose business address is 62 Victoria Street, Smithfield, New South Wales, 2164, Australia ("Binns") and the Australian company, Knott Investments Pty. Limited trading as "Winnebago Industries", 62 Victoria Street, Smithfield, New South Wales, 2164, Australia (A.C.N. _______________________) ("Australian Company"). WHEREAS, Winnebago is the proprietor of the marks "Winnebago" and "W" in stylized form ("Proprietary Marks") and has goodwill and reputation associated with the Proprietary Marks in the United States of America, and elsewhere in the world; and WHEREAS it is alleged Binns and Australian Company have used the Proprietary Marks in the United States of America without being granted a license from Winnebago and have generally sought to pass themselves off as associated with Winnebago and to trade on Winnebago's goodwill and reputation embodied in the Proprietary Marks; and WHEREAS, Winnebago wishes to ensure that Binns and Australian Company cease all use of the Proprietary Marks and do not in any way associate themselves or their products with Winnebago in future; and WHEREAS, Binns and Australian Company wish to avoid legal action being taken against them by Winnebago in the United States of America in relation to their use of the Proprietary Marks and their passing off and trading on Winnebago's reputation and goodwill. NOW THEREFORE, in consideration of the mutual covenants set forth herein and for other good and valuable consideration, receipt of which is hereby acknowledged, the parties agree as follows: 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. 3. The terms set forth herein are intended to be the final expression of the agreement of the parties in this matter. This Agreement is a complete and exclusive statement of the terms of the agreement between the parties relating to the subject matter contained herein. This Agreement may not be modified except by a written instrument executed by all parties hereto. 4. The undersigned represent and warrant that they have the power and authority to execute this Agreement on behalf of their respective corporations or the person for which they are suing. 5. This Agreement shall be effective when it is executed by all parties hereto. This Agreement shall be enforceable against the successors, assigns and related entities of the parties to the same extent as themselves. For the purposes of this Agreement, the term "related entities" means corporations or individuals that have any financial, business or family association with Mr Binns or Australian Company. 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. 7. This Agreement shall be governed by the laws of Iowa. 111 The Agreement is signed by Bruce Binns, in his personal capacity and on behalf of Knott, and by Mr Beebe, on behalf of Winnebago.

[49]

Issue 1 - Winnebago's Reputation in Australia 117 The respondents submitted that the relevant time for assessing the respondents' conduct is at the commencement of the impugned conduct. In support of that submission, the respondents cited Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 at 204-205 per Deane and Fitzgerald JJ; Thai World Import & Export Co Ltd v Shuey Shing Pty Ltd (1989) 17 IPR 289 at 302-303 per Gummow J; Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 275 ALR 526 at [332]-[333] per Yates J; Nature's Blend Pty Ltd v Nestlé Australia Ltd (2010) 86 IPR 1 at [13]; Anheuser-Busch Inc v Budejovicky Budvar, Narodni Podnik (2002) 56 IPR 182 at 237 per Allsop J; Health World Ltd v Shin-Sun Australia Pty Ltd (2008) 75 IPR 478 at 489 (overturned on appeal on different grounds); Nutrientwater Pty Ltd v Baco Pty Ltd (2010) 265 ALR 140 at 160 per Kenny J; and Applied Business Technology v Grandmaster Computers Pty Ltd (1999) 161 ALR 31 at 34 per Katz J. 118 Winnebago submitted that, in the circumstances of the present case, the relevant date at which Winnebago's reputation must be assessed is the date upon which this proceeding was commenced or the date of the trial. In the alternative, Winnebago submitted that, if the date at which Winnebago's reputation must be assessed is the date of the commencement of the impugned conduct, the result will be the same in this case because, as at that date, Winnebago had a sufficient reputation in Australia. 119 The date when the impugned conduct commenced was 1 June 1982. For passing off, I think that the relevant date is that date. For the statutory causes of action, later dates may be relevant. 120 In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302, Lockhart J, as a member of a Full Court, said (at 343): The requirement in some of the cases that a very slight form of business activity is sufficient is really a somewhat artificial concept. The real question is whether the owner of the goods has established a sufficient reputation with respect to his goods within the particular country in order to acquire a sufficient level of consumer knowledge of the product and attraction for it to provide custom which, if lost, would be likely to result in damage to him. This is essentially a question of fact. As I outlined in more detail earlier, it is still necessary for a plaintiff to establish that his goods have the requisite reputation in the particular jurisdiction, that there is a likelihood of deception among consumers and a likelihood of damage to his reputation. But reputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner: see for example C & A Modes, Orkin and Midas (supra). Certainly the law of passing off does not confer protection on the owners of goods who have no reputation in a particular jurisdiction, otherwise they would have an international monopoly with respect to the name, get-up or mark applied to their goods (and services) and may never intend to exploit it in the particular jurisdiction. It is the likelihood of deception among consumers and of damage to reputation that are the critical requirements to establish a case of passing off and they prevent any such unauthorised international monopoly being granted to a plaintiff. A quia timet injunction is a good illustration of this point for, in most cases, while such an injunction will be granted where the plaintiff has at the time of action no relevant business connection with the particular jurisdiction but has a reputation there and has established a likelihood of deception amongst consumers, he must go on to establish a likelihood of damage to his reputation and that he intends to establish in some way his business or sell his goods in that jurisdiction. Indeed, it is the nub of the present case whether the facts sufficiently establish reputation of the appellant and a likelihood of deception among consumers here and damage to the reputation of the appellant, a matter to which I shall turn later. 121 At 372 in ConAgra Inc, Gummow J said: The preferred position In my view, where the plaintiff, by reason of business operations conducted outside the jurisdiction, has acquired a reputation with a substantial number of persons who would be potential customers were it to commence business within the jurisdiction, the plaintiff has in a real sense a commercial position or advantage which it may turn to account. Its position may be compared with that of a plaintiff who formerly conducted business within the jurisdiction and has retained a reputation among its erstwhile customers, and with that of a plaintiff with a reputation which arises from its trade in the jurisdiction, but extends to goods or services which are not presently marketed by him. If the defendant moves to annex to itself the benefit of such a reputation by attracting custom under false colours, then the defendant diminishes the business advantage of the plaintiff flowing to it from the existence of his reputation. This is so whether the plaintiff is a party which may expand into a new field of business or resume a former business conducted in the jurisdiction, or a party which may enter the jurisdiction to establish a business for the first time. The immediacy and intensity of the intention of the plaintiff to commence or resume business is, in my view, a question going not so much to the invasion of the plaintiff's rights as to the imminence of a threat sufficient to justify an injunction. The bad faith of the defendant will not be sufficient to confer rights upon a plaintiff where the necessary reputation in the jurisdiction is lacking. Further, in my view, in these cases the presence of bad faith on the part of the defendant is not an additional requirement which is to be satisfied by the plaintiff; fraud in the sense of persistence after notice of the plaintiff's rights will suffice. 122 At 377, French J (as he then was) said that the applicant in a passing off suit must establish that it has a reputation as at the relevant date amongst a substantial number of persons who would be potential customers were those goods or services to be marketed within the jurisdiction. 123 The respondents submitted that the evidence did not justify a finding that Winnebago's reputation in Australia as at 1 June 1982 was known amongst sufficient persons in the relevant class of potential customers. They submitted that the absence of sales of Winnebago RVs into Australia prior to that date was critical. They argued that the mere availability of publications where Winnebago is mentioned (without more) was unpersuasive. They said the screening of one movie (Escape to Witch Mountain) in 1975 did not make Winnebago's case any stronger. There was no evidence of how many people saw the movie nor was there evidence of the background and circumstances of those who saw the movie. The respondents contended that general statistics about the travel habits and movements of Australian residents who travelled overseas and of visitors to Australia from other countries proved nothing. 124 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. 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. 127 The evidence showed some advertisements which specifically identified Winnebago and its RVs. One imported model had been offered for sale by one of the businesses which specialised in the sale of such vehicles. 128 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. 129 Very slight activities have been held sufficient to establish that a name has become distinctive of a person's business in a particular country. It is not necessary to establish that the claimant commenced retail sales in that country (see Miki Shoko Co Ltd v Merv Brown Pty Ltd [1988] ATPR 40-858 at 49278 (2nd column) (per Lockhart J). 130 Taking all of the above matters into account, I find 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. 131 In the circumstances of this case, this finding is sufficient to entitle Winnebago to relief based on passing off and the statutory contraventions of the TPA and the ACL.

[50]

Issue 2 - The False Representation Case 132 As submitted by Winnebago, the question of whether, by their use of the Winnebago marks, the respondents represented that they had a trade connection of the requisite kind with Winnebago must be addressed by reference to the members of the class to which any such representation was directed (see Campomar Sociedad Limitada v Nike International Ltd (2000) 202 CLR 45 at [103] (p 85) (per Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ) and Butcher v Lachlan Realty Pty Ltd (2004) 218 CLR 592 at [36] (P 64) (per Gleeson CJ, Hayne and Heydon JJ)). 133 The relevant class in the present case is potential purchasers or renters of RVs in Australia. The question is whether an ordinary or reasonable member of the class is likely to have understood the respondents' use of the Winnebago marks in Australia as conveying a trade connection with Winnebago (Campomar Sociedad Limitada at [102] (p 85)). 134 If Winnebago is able to demonstrate that the impugned conduct was not commercially irrelevant, it will succeed in establishing that sufficient members of the relevant class had knowledge of its reputation as to warrant the impugned conduct being characterised as misleading or deceptive (per Yates J in Optical 88 Ltd at [335]-[342] (pp 590-591)). 135 Section 53(c) and s 53(d) of the TPA provided: 53 False or misleading representations A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services: … (c) represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have; (d) represent that the corporation has a sponsorship, approval or affiliation it does not have; … 136 Section 29(1)(g) and s 29(1)(h) of the ACL provide: 29 False or misleading representations about goods or services (1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services: … (g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or (h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation; or … 137 The TPA applied to the respondents' conduct up to 1 January 2011 and the ACL applied thereafter. 138 Once it is accepted that Winnebago had a sufficient reputation in Australia prior to 1 June 1982, it follows, it seems to me, that, by using the Winnebago marks and making the statements in the magazine Australian Caravan World suggesting a trade connection between them and Winnebago, the respondents made representations which are prohibited by s 53(c) and s 53(d) of the TPA and s 29(1)(g) and s 29(1)(h) of the ACL and thus contravened those sections. For the same reasons, they contravened s 52 of the TPA and s 18 of the ACL.

[52]

Issue 4 - Estoppel 141 The respondents' estoppel case is pleaded in par 71 of their Further Amended Defence in the following way: (a) [Winnebago] has been aware of the use by [Knott] of the Australian Winnebago Trade Marks and the Australian W Logo since at least November 1988; (b) in about November 1991 John Hanson, founder and Chief Executive Officer of [Winnebago], met with Bruce Binns, director of [Knott] and agreed that the First Respondent could continue using the Australian Winnebago Trade Marks and the Australian W Logo in Australia; (c) pursuant to clause 1 of the Settlement Agreement dated 16 September 1992 [Winnebago] agreed that [Knott] could continue to use the Australian Winnebago Trade Marks and the Australian W Logo in Australia; (ca) the matters referred to in subparagraphs (b) and (c) above amount to representations by [Winnebago] that [Knott] was permitted to use the Australian Winnebago Trade Marks and the Australian W Logo in Australia. (d) [Knott] has acted in reliance on and induced by the representations pleaded in subparagraph (ca) above and expended significant resources in building a substantial business in the manufacture, supply and promotion of recreational vehicles under the Australian Winnebago Trade Marks and the Australian W Logo; (e) [Knott] has expanded its dealership network in Australia; (f) each of the Second to Twelfth Respondents has expended significant resources in building their own dealerships through which they supply and promote recreational vehicles under the Australian Winnebago Trade Marks and the Australian W Logo; (g) the filing of the Application herein by [Winnebago] is contrary to the representations pleaded in subparagraph (ca) above; and (h) by reason of the matters pleaded in subparagraphs (a) to (g) above, it is unconscionable for [Winnebago] to now assert, and [Winnebago] is estopped from asserting the claims pleaded in the Statement of Claim and from seeking the relief sought in the Application. (h) by reason of the matters pleaded in subparagraphs (a) to (g) above, it is unconscionable for [Winnebago] to now assert, and [Winnebago] is estopped from asserting the claims pleaded in the Statement of Claim and from seeking the relief sought in the Application. 142 The first estoppel case is based upon a conversation which Bruce Binns said he had with John K Hanson in late November 1991 at the RV Trade Show in Louisville, Kentucky. Because I have rejected Bruce Binns' evidence in this regard, the first estoppel cannot run. 143 The second estoppel case, as pleaded, is an estoppel based upon representations said to have been made in the Settlement Agreement. The respondents submitted that, by cl 1 of that Agreement, Winnebago represented to Knott that Knott was permitted to use the Winnebago marks and the Australian mark in Australia in perpetuity. 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). 146 For these reasons, I am of the view that the pleaded representations do not arise from the Settlement Agreement. 147 The second estoppel case therefore fails.

[53]

Issue 5 - Laches, Acquiescence and Delay 148 It was submitted on behalf of the respondents that Winnebago has stood back, in full knowledge of Knott's conduct, since at least 1988 and has let Knott develop its business trading under the name "Winnebago Industries" into a large and successful business. The respondents went on to submit that, in an appropriate case, delay might be a good and sufficient reason for the Court to refuse relief, even relief based upon contraventions of the TPA and the ACL. In support of this submission, the respondents relied upon Carlton & United Breweries (NSW) Pty Ltd v Bond Brewing New South Wales Ltd (1987) 76 ALR 633 at 638 (per Bowen CJ, Beaumont and Foster JJ). 149 The respondents submitted that they had an even stronger case for the refusal of relief in respect of the case based upon passing off. The submission was that the injunctive relief claimed was equitable relief in aid of a common law right and should be withheld given the extraordinary delay in the present case. 150 Winnebago relied upon World Series Cricket Pty Ltd v Parish (1977) 16 ALR 181. In that case, at 189, Bowen CJ said: If the application was for a final injunction, it would usually be the case that laches in the sense of mere delay (if mere delay can constitute laches), or delay sufficient to constitute in equity an equitable release or abandonment of the claim, would rarely disentitle an applicant to relief under s 80. 151 Winnebago submitted that the respondents did not rely upon laches or acquiescence but rather confined its submission in this area to mere delay. That seems to be a correct submission when regard is had to par 68 of the respondents' Closing Written Submissions. Winnebago submitted that, in any event, such a defence could not operate effectively as a reason to withhold discretionary relief pursuant to the TPA and the ACL. Paragraph 68 of the respondents' Submissions also makes clear that laches and acquiescence are not relied upon as an answer to Winnebago's case for relief based upon passing off. 152 In this case, there has been extraordinary delay on the part of Winnebago in taking steps to vindicate its rights in the Winnebago marks. It has been aware of the conduct of Bruce Binns and Knott in Australia since 1985. It did not take any action to protect the Winnebago marks until late 1991. In the six year period between 1985 and 1991, all that it did was to make some enquiries and to ruminate internally about what action it could take to protect its position. 153 By late 1991, Winnebago was prepared to put its toe in the water to see whether it could secure some protection for its position. This is the reason that it instructed its then Australian lawyers to write to Knott at that time. The evidence before me as to the circumstances in play at that time makes tolerably clear that Winnebago did not wish to undertake expensive and protracted litigation in order to protect its rights at that time, principally because it had no intention of exporting to the Australian market any of its Winnebago-branded RVs. However, it was anxious to take some sensible and balanced steps to protect its position. In the end, it secured the Settlement Agreement which I have held was, in effect, a standstill agreement designed to leave the parties in whatever position they found themselves as at late 1991 and into 1992 subject to Winnebago expressly reserving its right to take steps to fully protect the Winnebago marks at some time in the future. 154 Bruce Binns was at great pains to endeavour to disavow any proper or sensible understanding of the Settlement Agreement when he gave his oral evidence before me. In particular, he sought to hark back to the alleged conversation which he had with John K Hanson in late November 1991 in order to put a complexion on the Settlement Agreement which suited his case. 155 The truth was that Bruce Binns and Knott too were quite happy to enter into a standstill agreement as at late 1991 and 1992 because, for so long as Winnebago did not intend to sell into the Australian market, Knott would have free rein to continue on its merry way manufacturing and selling Winnebago-branded RVs in Australia without interference from Winnebago. There 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. 156 In my judgment, the thinking that I have described at [153]-[155] above was the thinking which motivated the parties to enter into the Settlement Agreement even though, as I have found, it did not resolve in any final way the differences which had developed between them. 157 For these reasons, 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. 158 Accordingly, even if these defences were available as a matter of principle, I would not uphold them in the circumstances of the present case.

[57]

Issue 9 - Copyright 164 At [39]-[46] above, I have summarised the evidence given by Paul David Hanson as to the circumstances in which the Winnebago marks were created. Winnebago submitted that they are artistic works (being drawings) which came into existence and were published in the USA prior to the commencement of the Copyright Act on 1 May 1969. It was further submitted that, nonetheless, subject to the issue of originality, copyright subsists in them under the Act: see ss 10(1) (the definition of "artistic work"), 32(2), 207, 210(1) and 211(2) of the Copyright Act; reg 4(1) and reg 10 of the Copyright (International Protection) Regulations 1969; and the Copyright Act 1911 (UK), s 1(1)(a) and s 35(1) (the definition of "artistic work"). 165 Winnebago submitted that the requirement of originality does not mean that the work must be the expression of original or inventive thought. Rather, the work must not be copied from another work, ie, it should originate from the author. In this context, "originality" means that the creation of the work required some independent intellectual effort, but neither literary (or in the case of an artistic work, artistic) merit nor novelty or inventiveness as may be required in patent law. 166 When regard is had to the evidence of Mr Paul Hanson, so it was submitted, the necessary originality is plainly established. The fact that the logos underwent development over the years does not change the character of the source creations. 167 The respondents criticised the quality of Winnebago's proof in respect of its copyright claims. The respondents quite rightly drew the attention of the Court to the fact that there is no evidence of the circumstances in which, and the means by which, the sketches drawn by John K Hanson in 1959 came to be modified into the current version of the Winnebago logo and the flying W logo. Again, quite rightly, it was submitted on behalf of the respondents that the evidence as to the circumstances in which and the means by which the original sketches drawn by Mr Hanson came to be developed into the logos which were originally used on Winnebago RVs is scant, to say the least. The respondents also submitted that the Court should draw an inference that Winnebago's Production Manager used a stencil or similar device incorporating commercially available typefaces to prepare the early versions of the first Winnebago logo. 168 I think that there is considerable force in the respondents' submissions in respect of Winnebago's copyright case. The evidence does not establish to the requisite standard the copyright claims pleaded in respect of the Winnebago logo and the flying W logo. The evidence of originality is insufficient and the chain of development was not seriously addressed. 169 As far as the name "Winnebago" is concerned, there is no originality in the word itself. The question is whether there is sufficient originality in the idea that the word should be applied to the business and products of Winnebago. I do not think that there is sufficient originality in that name to justify copyright protection. 170 For all of the above reasons, I reject the copyright case propounded by Winnebago.

[58]

Issue 10 - Cancellation of the Australian mark 171 As I explained at [23]-[26] above, Winnebago relies upon various grounds to support an order pursuant to s 88(2) of the TM Act that the Australian mark be cancelled. 172 Section 88 of the TM Act is in the following terms: 88 Amendment or cancellation - other specified grounds (1) Subject to subsection (2) and section 89, a prescribed court may, on the application of an aggrieved person or the Registrar, order that the Register be rectified by: (a) cancelling the registration of a trade mark; or (b) removing or amending an entry wrongly made or remaining on the Register; or (c) entering any condition or limitation affecting the registration of a trade mark that ought to be entered. (2) An application may be made on any of the following grounds, and on no other grounds: (a) any of the grounds on which the registration of the trade mark could have been opposed under this Act; (b) an amendment of the application for the registration of the trade mark was obtained as a result of fraud, false suggestion or misrepresentation; (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; (e) if the application is in respect of an entry in the Register - the entry was made, or has been previously amended, as a result of fraud, false suggestion or misrepresentation. Note 1: For prescribed court see section 190. Note 2: For file, registered owner and this Act see section 6. 173 Although it was originally contended on the part of the respondents that Winnebago was not "an aggrieved person" within the meaning of s 88 of the TM Act and thus did not have standing to seek the relief afforded to claimants pursuant to that section, that contention was abandoned at the hearing. 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. 175 Pursuant to that section, I will make an order rectifying the Register by cancelling the Australian mark.

[59]

Conclusions 176 Winnebago has established an entitlement to non-pecuniary relief based upon the tort of passing off. It has also proven contraventions of ss 52, 53(c) and 53(d) of the TPA (up to January 2011) and ss 18, 29(1)(g) and 29(1)(h) of the ACL thereafter. It has also made out an entitlement to relief pursuant to s 88 of the TM Act. I have not considered it necessary to deal with its breach of contract case. Nor have I considered its claim for corrective advertising orders. Winnebago failed to make good its copyright case. 177 Given Knott's deep involvement in the events dealt with in these Reasons for Judgment through the actions of Bruce Binns and the actions of Mr Mayo, a senior employee of Knott, I find that Knott has been aware of the facts and matters relied upon by Winnebago as constituting the contraventions of the TPA and the ACL committed by Knott's dealers. I also find that Knott knew that the conduct of its dealers was wrongful. For these reasons, Knott should be held liable as an accessory to the contravening conduct in which its dealers engaged. 178 As far as Knott's dealers are concerned, I find that they too have committed the tort of passing off and contravened the TPA and the ACL for the same reasons as I have found Knott liable. I do not see their position as distinguishable from that of Knott. Relief should, therefore, also be granted against the second to twelfth respondents in the same terms as the relief which is granted against Knott. 179 In those circumstances, I propose to direct the parties to bring in Short Minutes of Order giving effect to these Reasons. 180 I will defer dealing with the question of costs for the time being. 181 I should indicate for the benefit of the parties 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. 182 For all of the above reasons, the only orders I will make at the present time are orders requiring the parties to confer and to agree, if possible, on appropriate orders to give effect to these Reasons and, in the absence of agreement, for competing sets of orders to be submitted to the Court. I certify that the preceding one hundred and eighty-two (182) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Foster.

Winnebago Industries, Inc v Knott Investments Pty Ltd

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