Putting your valuable Intellectual Property Rights in the Glove Box for a Rainy Day? - There may be a Road Block Ahead

Introduction

Successfully securing your valuable intellectual property rights is important. But it is only part of the story. If you fail to identify infringements of those rights and, importantly, take action to enforce those rights promptly, then those rights might be limited or lost.

The recent decision of the Full Federal Court in Knott Investments Pty Limited v Winnebago Industries, Inc [2013] FCAFC 59 (Appeal) is an extreme example of delay in enforcing rights. Notwithstanding its specific and slightly unusual facts, the case acts as a timely reminder that rights owners need to consider the implications of delaying taking steps when infringing conduct is identified.

Background

Winnebago Industries Inc (Winnebago) has been in the business of manufacturing and selling its Recreational Vehicles (RV's) since late 1959 under or by reference to the trade mark WINNEBAGO. Winnebago sold its RV's initially in the United States, but subsequently expanded into other countries, although did not sell in Australia at the relevant times. Winnebago was also the registered proprietor of the following trade mark in the USA:

In the late 1960's, Mr and Mrs Binns (the Binns) travelled to the USA, Canada and Mexico as tourists and noticed the substantial reputation of the WINNEBAGO branded RVs.

In 1978, the Binns secured the Australian business name "Winnebago Industries" and commenced selling RVs under the mark WINNEBAGO in Australia. Knott Investments Pty Limited (Knott) was subsequently incorporated by the Binns in 1982 and through Knott they continued to manufacture and sell RVs and campervans under the brand WINNEBAGO. Additionally, use was made by Knott of a logo in the same form as the logo used by Winnebago.

Winnebago first became aware that Knott was using the WINNEBAGO mark in 1985, but did not initially take any steps to enforce its rights. Winnebago did nothing to stop Knott trading under the mark until 1991, which resulted in a "settlement" agreement between the parties in 1992. This settlement agreement purported to maintain Winnebago's rights in Australia, whilst allowing Knott some limited rights to continue to use the WINNEBAGO mark in Australia.

In approximately 2010 Winnebago made a decision to look to Australia for further expansion of its RV business. It took steps against Knott seeking to have it cease any further use of the WINNEBAGO mark in Australia (including the logo).

Decision at First Instance1

Winnebago commenced proceedings against Knott for removal of Knott's trade mark which had...