Article: Court rules Winnebago brand was 'hijacked'

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The Age -> click here

WHEN is a Winnebago not a Winnebago? When the big boxy mobile home is made in Australia, according to the Federal Court in Sydney.

In a decision that will have ramifications for a swath of dealers that sell Australian-made vehicles bearing the name Winnebago, the court has found that a Sydney businessman, Bruce Binns, "intentionally hijacked" the well-known US brand "in a bold attempt to pre-empt Winnebago's opening its doors here".

Winnebago Industries, of Forest City, Iowa, has been making its distinctive recreational vehicles in the US since 1966.

But the Federal Court heard Mr Binns' company, Knott Investments, which has nothing to do with the US company, began making similar vehicles in Sydney from at least 1982. He called them Winnebago and advertised and marketed the vehicles using logos almost identical to those of the US company.
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The Federal Court has found Mr Binns deliberately exploited Winnebago's brand, logo and its reputation, and breached the Trade Practices Act and the Australian Consumer Law.

Justice Lindsay Foster said Mr Binns traded on the US company's reputation for decades.

"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," he said.

The court heard that an advertisement Mr Binns placed in Austra-lian Caravan World in 1995 contained the text: "You'd expect nothing less from Winnebago, the world's most respected name in luxury motor homes."

Justice Foster said Mr Binns' "earnest denials", that he was not trying to exploit the goodwill and reputation of Winnebago, were not credible, and instead he wanted to garner as much financial benefit as possible from using the Winnebago brand.

The court heard that in 1992 Mr Binns signed a settlement with the US company in which he agreed to stop passing off his products as those of Winnebago, yet he continued to do so and in 1997 he registered Winnebago as a trademark in Australia.

It was not until 2010 that the US group launched legal action, alleging Mr Binns and 11 dealers had misled consumers and falsely represented that the Australian-made vehicles were manufactured under licence or with the approval of the US company.

Justice Foster noted there had been "extraordinary delay" by the US company in protecting its rights, and it did nothing until 1991, despite knowing of Mr Binns' activities six years earlier.

But he said it was "tolerably clear" that the US company did not want to embark on expensive litigation earlier "principally because it had no intention of exporting to the Australian market".

"Until 2010, it had not exported RVs to Australia. Since that date, however, it has become interested in doing so."

Justice Foster has ordered the cancellation of the Winnebago trademark in Australia. But he indicated the vehicle dealers may be allowed some time to rebrand their businesses, considering the costs involved and the fact they had traded using the Winnebago brand name without objection for a long time.

Mr Binns this morning issued a statement saying his company was "completely shocked at this finding", and that the company's lawyers were examining the court's decision to determine whether an appeal might be made.

Knott Investments was represented by the law firm, King & Wood Mallesons, during a four-day hearing in the Federal Court from May 30 to June 2.

Mr Binns issued the statement under a corporate letterhead that used the business name Winnebago Industries. He said "nothing has changed with either our products or the services we offer".

Entry-level Winnebagos retail in the US from about $US100,000 and some models fetch more than $US340,000.

Read more: http://www.theage.com.au/business/court-rules-winnebago-brand-was-hijacked-20120730-23agh.html#ixzz22AdKKngo