The restraint includes -
(a) the Winnebago name;
(b) any other name or mark substantially identical with, or deceptively similar to, the Winnebago name;
(c) the Winnebago logo, being the Winnebago name represented in a stylised manner as shown in Schedule 1 to these orders;
(d) the W logo, being the letter “W” represented in a stylised manner as shown in Schedule 2 to these orders; and
(e) any other name or mark or logo substantially identical with, or deceptively similar to, the Winnebago or W logos, without:
(f) where the name, mark or logo is used on one or more vehicles or in a document (including any print advertisement or webpage), stating in any relevant document (including any print advertisement or web page) or on any vehicle, clearly and prominently, and reasonably proximate to any name, mark or logo:
(i) (where the name, or mark or logo is used on or in relation to a single vehicle) “This vehicle was not manufactured by, or by anyone having any association with, Winnebago of the United States”; or
(ii) (where the name, or mark or logo is used on or in relation to more than one vehicle) “These vehicles were not manufactured by, or by anyone having any association with, Winnebago of the United States”;
(g) where the name is used in a radio commercial, stating by a clear and prominent voiceover of no less than 10 seconds: “These vehicles were not manufactured by, or by anyone having any association with, Winnebago of the United States”; and
(h) where the name, mark or logo is used in a television advertisement, stating clearly and prominently and by a clear and prominent voiceover of no less than 10 seconds: “These vehicles were not manufactured by, or by anyone having any association with, Winnebago of the United States”.In Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110 the Court has overturned the first instance ruling that Modena had infringed Cantarella’s registered trade marks for Oro and Cinque Stella for coffee. On appeal the FCAFC revoking the registrations on the basis that the marks were not capable of distinguishing. Both Modena (as agent for Italian company Molinari) and Cantarella had been using those words to identify their coffee. In 2011 Cantarella sued Modena, alleging that the products imported and sold in Australia were infringing Cantarella’s registered marks.
The Federal Court initially agreed. The Full Court however overturned that decision and ordered cancellation of Cantarella’s marks. In doing so the FCAFC judgment revisited the test in Clark Equipment v Registrar of Trade Marks (1964) 111 CLR 511 for determining when a mark is inherently adapted to distinguish
the question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives — in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess — will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.The High Court in Clark Equipment refused registration of the Michigan mark for tractors originating in the US state of Michigan. The Court held, in an era when Michigan was famous for metal bashing, that other traders might without improper motive want to use that word in describing other tractors.
In Modena Trading the FCAFC commented that Italy was a common source of coffee, the Italian language often featured in relation to coffee - law lecturer fuel such as cafe latte, espresso and cappuccino - it was likely that other traders would without improper motive be likely to want to use descriptive Italian words in relation to their product. Such words include Oro and Cinque Stella.
Importantly, the FCAFC considered that the trial judge put too much emphasis on understanding by “ordinary English-speaking people in Australia” - ie Australian consumers generally - of Oro and Cinque Stella. The proper enquiry was instead whether other traders would want to use those words. It indicated that the reference to “the common right of the public” enunciated by Kitto J in Clark Equipment was a reference to the common right of other traders as a sub-section of the general public.
