SMA Solar Technology AG v Beyond Building Systems Pty Ltd (No 2)

[2012] FCA 1015

FEDERAL COURT OF AUSTRALIA

SMA Solar Technology AG v Beyond Building Systems Pty Ltd (No 2) [2012] FCA 1015

Citation:		SMA Solar Technology AG v Beyond Building Systems Pty Ltd (No 2) [2012] FCA 1015
Parties:		SMA SOLAR TECHNOLOGY AG and SMA AUSTRALIA PTY LTD ACN 127 198 761 v BEYOND BUILDING SYSTEMS PTY LTD ACN 128 030 302 and IPEVO PTY LTD ACN 143 970 978
File number:		NSD 817 of 2011
Judge:		PERRAM J
Date of judgment:		17 September 2012
Catchwords:		PRACTICE AND PROCEDURE – Amendment of pleadings – whether pleading should be amended
Date of hearing:	17 September 2012
Place:	Sydney
Division:	GENERAL DIVISION
Category:	Catchwords
Number of paragraphs:	6
Counsel for the Applicants:	M Darke, H Pintos-Lopez
Solicitor for the Applicants:	Corrs Chambers Westgarth
Counsel for the First Respondent:	The first respondent did not appear
Counsel for the Second Respondent:	C Amato
Solicitor for the Second Respondent:	Addisons

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 817 of 2011

BETWEEN:

SMA SOLAR TECHNOLOGY AG
First Applicant

SMA AUSTRALIA PTY LTD ACN 127 198 761
Second Applicant

AND:

BEYOND BUILDING SYSTEMS PTY LTD ACN 128 030 302
First Respondent

IPEVO PTY LTD ACN 143 970 978
Second Respondent

JUDGE:	PERRAM J
DATE OF ORDER:	17 SEPTEMBER 2012
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1.The applicants be granted leave to adduce the evidence of Mr Weiner by videolink from Germany at a time and in a manner to be determined.

2.The applicants be granted leave to file and serve a further amended statement of claim substantially in the form of annexure OMG-3 to the second affidavit of Odette Margaret Gourley sworn on 6 September 2012 and to do so by 18 September 2012.

3.The applicants pay the second respondent’s costs thrown away by reason of the amendment.

Note:   Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 817 of 2011

BETWEEN:

SMA SOLAR TECHNOLOGY AG
First Applicant

SMA AUSTRALIA PTY LTD ACN 127 198 761
Second Applicant

AND:

BEYOND BUILDING SYSTEMS PTY LTD ACN 128 030 302
First Respondent

IPEVO PTY LTD ACN 143 970 978
Second Respondent

JUDGE:	PERRAM J
DATE:	17 SEPTEMBER 2012
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. The applicants apply for leave to amend their pleading to insert a further particular to paragraph 23 of the statement of claim.  This is opposed on two bases.  First, it is said that the paragraph is insufficiently particularised.  Particular (f), which is proposed to be inserted, is as follows

   Particulars

   …

   (f)Pursuant to a licence agreement dated 31 May 2010, the Second Respondent has licensed the First Respondent to use the sign SUNNY ROO, registered Australian Trade Marks Nos 1312858, 1389705 and 1389262, and other Sunny Names and Logos in respect of its Solar Products.

2. The complaint relates to the expression ‘other Sunny Names and Logos in respect of its Solar Products’.  The argument was that it was difficult to know precisely what was countenanced by those expressions.  However, those expressions are defined in paragraphs 4 and 6 of the pleading as defined terms and, in those circumstances, I do not think that there is a difficulty in relation to the particulars on the form of the pleading. 

3. In any event, Mr Darke indicated from the bar table that what was contemplated were the names and logos referred to at paragraphs 21, 22 and 23 of the written outline of submissions which, as events transpire, is consistent with the definitions which appear at paragraphs 4 and 6.

4. The second complaint was that it was possible that, as a result of the insertion of particular (f), evidence might be needed as to the operation and/or the meaning of the licence agreement referred to in that particular.  The licence agreement which has brought forth the amendment application was discovered by the second respondent to the applicants on 27 August 2012 and the current amendment foreshadowed by the applicants on 3 September. 

5. Ms Amato of counsel, who appears for the second respondent, indicated that if a particular construction were put upon the licence agreement it might be necessary for her to call an additional witness and/or perhaps tender some documents.  It was not put that this would necessarily follow.  The potential prejudice highlighted by the second respondent appears to me to be of a largely conjectural kind.  This matters when the circumstances which are brought forward in the present application arise from the second respondent’s own failure to discover the document in question until 27 August.  Given the promptitude with which the applicants moved, I see no reason to decline to grant an amendment on that basis. 

6. Accordingly, I will order that: 

   1.The applicants be granted leave to file and serve a further amended statement of claim substantially in the form of annexure OMG-3 to the second affidavit of Odette Margaret Gourley sworn on 6 September 2012 and to do so by 18 September 2012.

   2.The applicants pay the second respondent’s costs thrown away by reason of the amendment.

I certify that the preceding six (6) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perram.

Associate:

Dated:       20 September 2012