SMA Solar Technology AG v Sunny Energy Australia Pty Ltd
[2022] ATMO 138
•17 August 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by SMA Solar Technology AG to registration of trade mark application numbers 2071681 Sunny Energy Australia (Class 37), 2071692 Sunny Energy (Class 37), and 2073806 SUNNY ENERGY AUSTRALIA (Class 35) - in the name of Sunny Energy Australia Pty Ltd
Delegate:
Tracey Berger
Representation:
Opponent: Julian Cooke of Counsel, instructed by Davies Collison Cave
Applicant: Andrew Sykes of Counsel, instructed by Y Intellectual Property
Decision:
2022 ATMO 138
Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44 and 60 considered – s 60 established – applications refused
Background
1. This decision relates to oppositions by SMA Solar Technology AG (‘Opponent’ to registration of the marks below in the name of Sunny Energy Australia Pty Ltd (‘Applicant’):
Trade Mark Number
(‘Applications’)
Trade Mark
(‘Applicant’s Marks’)Priority Date
(‘Relevant Dates’)
Specification
(collectively ‘Services’)
2071681
Sunny Energy Australia
26 Feb 2020
Class 37:
Installation of solar energy systems2071692
Sunny Energy
26 Feb 2020
Class 37:
Installation of solar energy systems2073806[1]
SUNNY ENERGY AUSTRALIA
5 March 2020
Class 35:
Retail services featuring electricity and utilities services of others; retail, wholesale and distribution of solar energy systems, accessories and components thereof including but not limited to solar panels, solar cells, solar collectors, solar batteries, solar heating installations, solar lights; retail and wholesale services in relation to solar energy, solar energy storage and solar energy management products; arranging subscriptions to utilities for others; organisation and management of customer loyalty programs in relation to utilities services; energy retail services[1] This application includes an endorsement that the application was accepted under the provisions of ss 44(4) and/or Reg 4.15A.
2. The Applicant’s Marks were examined, accepted for registration and subsequently advertised for opposition on 27 July 2020 (applications 2071681 and 2071692) and 6 August 2020 (application 2073806).
3. In each case, the Opponent filed Notices of Intention to Oppose on 25 September 2020 followed by a Statement of Grounds and Particular (SGP) on 26 October 2020.[2] The Applicant filed a Notice of Intention to Defend the oppositions on 18 December 2020.
[2] Each of the SGPs is identical.
4. The parties then proceeded to file evidence in accordance with the timetable set out in Regulation 5.14.[3] On 19 March 2021, the Opponent filed evidence in support (‘EIS’), followed by the Applicant’s evidence in answer (‘EIA’) on 24 May 2021 and concluding with the Opponent’s evidence in reply (‘EIR’) on 26 July 2021.
[3] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
5. After the conclusion of the evidence stage, the parties were given the opportunity to request a hearing. Both parties requested an oral hearing and I heard this matter, as a delegate of the Registrar of Trade Marks, via video conference on 8 August 2022. The Opponent filed a written summary of its arguments on 25 July 2022 and at the hearing, Mr Julian Cooke of Counsel, instructed by Ian Drew and Clare Groves of Davies Collison Cave, made oral submissions (collectively the ‘Opponent’s Submissions). The Applicant filed written submissions on 1 August 2022 and Mr Andrew Sykes of Counsel, instructed by Andrew Petale of Y Intellectual Property, made oral submissions at the hearing (collectively the ‘Applicant’s Submissions’).
Preliminary Issue
6. With the Applicant’s written submissions, the Applicant filed a declaration of Hai Nguyen, Founding Director of the Applicant, made on 29 July 2022 (‘Further Nguyen Declaration’) and requested the declaration be considered under Reg 21.19. The purpose of the declaration was to correct an error in the Opponent’s EIR which incorrectly referred to the Applicant as Solar Energy Australia in relation to 2 job advertisements placed on Seek.
7. At the hearing, I indicated that I intended to allow the Further Nguyen Declaration. The Opponent objected to the inclusion of this material on the basis that it has no probative value whereas the Applicant argued the information was highly probative in that it demonstrates that ‘solar’ and ‘sunny’ are synonymous.
8. Regulation 21.19 of the Regulations affords the Registrar discretion to consider whether available information is relevant and should be considered in the course of making a decision. Regulation 21.19 is not a substitute for the evidence stages of an opposition and compelling reasons are required for inclusion of any new material in the hearing. The decision of a delegate to take into account information under regulation 21.19 requires consideration of a number of factors which include: the public interest and that of the parties in matters being decided in a timely and predictable manner; the public interest in the delegate of the Registrar having all material relevant to a decision; the requirement that principles of procedural fairness be adhered to; and the relative inconvenience to the parties.[4]
[4] Registrar of Trade Marks v Woolworths Ltd (1999) FCA 1020 (French J).
9. Regulation 21.19 is often relied on in instances where a party has failed to file its substantive evidence in time and for whatever reason is unable to obtain an extension of time. The present case is different. The Applicant merely seeks to correct what appears to be a typographical error in the Opponent’s EIR. Allowing the Further Nguyen Declaration does not cause any delay in the proceedings, does not cause any greater inconvenience to one party over another, serves a purpose in ensuring that the information before me is correct and addresses any possible suggestion that the Applicant was misrepresenting itself to the public by using a different company name.
10. Regulation 21.15(4) provides that:
“The Registrar is not bound by the Rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate”.
11. Accordingly, whilst I do not believe the Further Nguyen Declaration is critical to the outcome of this decision and that it is necessary to admit the declaration as evidence under Reg. 21.19, I take note of the information contained therein under Reg 21.15.
Evidence
The following evidence was filed:
EIS
Declaration of Dr Jürgen Reinert, CEO of the Opponent, and Dr Matthias Victor, Head of Innovation Center & IP of the Opponent, made on 16 March 2021 with Exhibits XX-1 to XX-37 (including Confidential Exhibits XX-6, XX-7 and XX-11) (‘SMA Declaration’);
EIA
Declaration of Hai Nguyen, Director of Applicant, made on 20 May August 2021, with Annexures HN-1 to HN-7 (including Confidential Annexure HN-5).EIR
Declaration of Larisa Vella-Xuereb made on 23 July 2021 with Exhibit LVX-1.
Opponent’s Evidence
13. The Opponent was founded in 1981 and is a world leading manufacturer, retailer and supplier of a broad range of solar invertors for photovoltaics (‘PV’) systems and goods for residential, commercial and utility grade segments, both on and off grid. The Opponent is the longest serving solar invertor manufacturer in the world having developed its first transistor invertor for photovoltaics in 1987. It has received numerous international awards and industry recognition.
14. The Opponent first used the mark SUNNY in Germany in 1995 and expanded this use to Australia in 1999. Since that time, the Opponent has used various trade marks containing or consisting of SUNNY in Australia and overseas. Further, the Opponent is the registered owner of 55 Australian trade marks containing or consisting of SUNNY as set out below[5] and uses a number of unregistered marks containing SUNNY (collectively ‘Opponent’s Family of SUNNY Marks’):
[5] Full details of the Opponent’s Family of SUNNY Marks are exhibited to the EIS.
15. Trade Mark
16. Trade Mark No.
17. Priority Date
18. Class
19. SUNNY CENTRAL
20. 1092963
21. (IR 870806)
22. 3 November 2005
23. 9
24. SUNNY BOY
25. 1109281
26. (IR 879508)
27. 3 November 2005
28. 9
29. SUNNY TRIPOWER
30. 1262777
31. (IR 973973)
32. 19 February 2008
33. 9
34. SUNNY BACKUP
35. 1267426
36. (IR 977552)
38. 4 February 2008
39. 9
40.
41. SUNNY ISLAND
42.
43. 1274353
44. (IR 982818)
45.
46. 10 October 2008
47. 9
48. SUNNY VIEW
49. 1478989
50. (IR 1107750)
52. 7 June 2011
53. 9
54. SUNNY PRO CLUB
55. 1484489
56. 5 April 2012
57. 16, 35, 38, 41
58. SUNNY MULTIGATE
59. 1522033
60. (IR 1132366)
61. 18 January 2012
62. 9
63. SUNNY HOME MANAGER
64. 1522034
65. (IR 1132368)
66. 11 July 2012
67. 9
68.
69. 1533993
70. (IR 1142279)
71. 2 April 2012
72. 16, 35, 38 & 41 41
73. SUNNY
74. 1566498
75. (IR 1164565)
76. 26 October 2012
77. 9, 38, 42
78. SUNNY PORTAL
79. 1634985
80. (IR 1209703)
81. 22 February 2013
82. 9, 38, 42
83. SUNNY PLACES
84. 1665148
85. (IR 1227529)
86. 19 February 2014
87. 9, 38, 42
88. SUNNY TRIPOWERCORE
89. 1836510
90. (IR No.1337314)
91. 31 August 2016
92. 9
93. SUNNY HIGHPOWER PEAK
94. 1881238
95. (IR 1371269)
96. 22 February 2022
97. 9
98. SUNNY HIGHPOWER
99. 1881239
100. (IR 1371270)
101. 22 February 2017
102. 9
103. SUNNY DESIGN
104. 1948934
105. (IR 856548 )
106. 27 July 2018
107. 9
The Opponent attests that the Opponent’s Family of SUNNY Marks are used in connection with a diverse range of solar electricity generation products and services including:
· solar panels and inverters under marks including SUNNY BOY, SUNNY TRIPOWER, SUNNY CENTRAL, SUNNY TOWER, SUNNY ISLAND and SUNNY BACKUP;
· software and monitoring devices used in connection with the operation of solar generation systems and the regulation/monitoring of generation and supply of solar generated electricity under marks including SUNNY BEAM, SUNNY WEBBOX and SUNNY DESIGN ;
· a mobile software application for consumers to access live data about the values and yield of the consumer’s solar generation and PV systems under the mark SUNNY PORTAL;
· installation and repair services for solar panels, inverters, solar generation systems and related software; and
· education and training in relation to solar panels, inverters, solar generation systems and related software.
(‘Opponent’s Goods and Services’)16. The Opponent’s Goods and Services include internet portals provided under the mark SUNNY PORTAL which allows PV system operators and installers to access system data and measure energy values and yields. The Opponent’s SUNNY PORTAL PV monitoring system, first released in 2004, is the largest in the world with over 700,000 registered systems globally and more than 20GW of monitored PV power in over 200 countries. Exhibited to the EIS is an independent report ‘Global PV Monitoring: Technologies, Markets and Leading Players 2014-2018’ citing the Opponent as the market leader in PV monitoring systems.
17. On 30 April 2014, the Opponent launch a mobile software application under its SUNNY PORTAL mark (‘Sunny Portal App’) which is available on Google Play and the Apple app store. Details of the number of downloads of this app are provided.
18. The Opponent provides goods for residential and large scale solar electricity generation and declares that it has installed over 750,000 inverters around Australia which generate over 35% of Australia’s total solar electricity.
19. The Opponent’s Goods and Services offered under the Opponent’s Family of SUNNY Marks have been promoted on:
· the Opponent’s Australian website at (‘Opponent’s Website’);
· its social media accounts (Facebook, Twitter, Instagram, YouTube and LinkedIn) since 2013;
· in its publications Sunny Boy Info since 2002, the SMA Magazine since 2010, its blog published on its global website at and newsletter titled ‘Sunny News Australia’;
· in third party publications including major newspapers such as the Sydney Morning Herald, The Age and The Advertiser, industry publications and online reviews;
· print advertisements in industry publications available internationally in print (distributed in Australia) and online;
· technical data sheets, product brochures, instructional installation manuals, press releases, presentations and external communications; and
· promotional events at various expos and conferences in Australia and Asia-Pacific.
20. The Opponent’s Family of SUNNY Marks are also used on the goods, packaging, labels, point of purchase advertising, invoices and shipping documentation. Various examples of such use are exhibited in the EIS.
21. In addition, the Opponent has operated a digital community under SUNNY PLACES since 2014 which allows its consumers to interact and share knowledge. Extracts from this website at are provided.
22. To ensure that existing customers maximise use of the Opponent’s Goods and Services, the Opponent offers training and certification programs at its SMA Solar Academy in North Sydney. Classes are offered in person and online and promote the Opponent’s Family of SUNNY Marks.
23. The Opponent has an Australian online service centre where consumers can obtain materials about the installation of its systems. It also has a network of 174 Australian corporate partners that provide installation services of its SUNNY products to residential consumers and various authorized Australian distribution partners for installation, maintenance, repair and technical support services. The Opponent’s authorised distribution partners promote the Opponent’s Goods and Services on their own websites and social media accounts.
24. The EIS includes approximate annual sales revenue generated under the Opponent’s Family of SUNNY Marks, as well as total sales revenue, in Australia and internationally. This revenue is very substantial.
25. The EIR outlines the findings of a commercial investigator into the trading activity of the Applicant. These enquiries did not reveal any telephone listings for the Applicant in the White Pages, Yellow Pages or current business telephone directories. A general Internet search disclosed only minimal references to the Applicant on the Internet namely on databases such as opengovau.com and aus.databasesets.com which refer to the Applicant by its ACN or ABN. A search of the South Australian Consumer and Business Services Register revealed that the Applicant was licensed in the category of electrical contractors on 16 October 2020. Searches of various other business databases did not list the Applicant.
26. A search of Seek for job vacancies posted by the Applicant revealed an advertisement in November 2021 for 3 solar electricians and another ad in April 2021 for 2 Solar Electrician Supervisors, in Adelaide.[6]
[6] These advertisements are the subject of the Further Nguyen Declaration.
27. A Google search revealed the Applicant’s website at (‘Applicant’s Website’) which does not indicate when the Applicant commenced trading but claims copyright from 2021. A search of the Whois database revealed this domain name was registered from 28 October 2020. A search using the Wayback machine for the Applicant’s Website did not reveal any archived results.
28. The investigator spoke with Mr Nguyen who advised that he operates solely on a referral basis and that the Applicant’s Website is a community resource for his referral customers. There is no showroom or retail outlet and the Applicant only operates from the Virginia, South Australia address listed as the registered office which Google Maps indicates is a residential address. The principal place of business listed for the Applicant appears from Google Maps to be a residence on a rural property.
Applicant’s Evidence
29. Mr Nguyen attests that in 2016, he decided to establish a solar panel retail and installation business in South Australia and chose the name SUNNY ENERGY. He conducted various searches for ‘Sunny’ including ASIC and Google searches and concluded that ‘Sunny was a popular word used in many other businesses in the solar energy industry in Australia and overseas. Mr Nguyen points to various other Australian businesses with ‘Sunny’ in their name in the field of solar power.
30. Attached to the EIA is a selection of invoices issued by the Applicant, extracts from its website of recent large scale solar panel projects and details of the brands of solar inverters stocked by the Applicant.
31. Finally, Mr Nguyen declares that he is unaware of any instances of confusion with the Opponent and attests to having purchased and supplied the Opponent’s products on a few occasions in the last 5 years.
Grounds and Onus
32. The SGP nominated grounds of opposition under ss 42(b), 44, 58 and 60. The s 58 ground of opposition was not pressed but would be available to the Opponent in the event of any appeal from this decision.
33. The Opponent carries the burden of establishing the ground of opposition on the balance of probabilities.[7] The rights of the parties are assessed as at the Relevant Dates.[8]
[7] Pfizer Products Inc v Karam [2006] FCA 1663, 22 (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, 133 (Besanko, Jagot and Edelman JJ).
[8] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
34. I have formed by decision based on the particulars in the SGP, evidence filed, Opponent’s Submissions and Applicant’s Submissions.
Discussion
Section 60
35. Section 60 provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
36. Accordingly, I must first decide whether the Opponent had a reputation in one or more of the Opponent’s Family of SUNNY Marks in Australia at the Relevant Dates and if so, whether as a result of that reputation, use of the Applicant’s Marks is likely to deceive of cause confusion.
Reputation
37. For the purposes of s 60, reputation must be established as a matter of fact by the Opponent[9] and must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[10] although this is tempered by the nature of the relevant market.
[9] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
[10] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
38. The reputation of a trade mark may be demonstrated in a variety of ways. For example, it may be established by demonstrating a significant number of people are exposed to a trade mark,[11] or inferred from a high volume of sales,[12] advertising expenditure or other promotion.[13]
[11] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
[12] McCormick & Co Inc v McCormick [2000] FCA 1335, [86] (Kenny J).
[13] Ibid.
39. It was observed in Rodney Jane Racing Pty Ltd v Monster Energy Company that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[14]
[14] [2019] FCA 923 [83] (O’Bryan J).
40. In support of this ground of opposition, the Opponent relies on its reputation in the Opponent’s Family of SUNNY Marks acquired by virtue of use of those marks in Australia since 1999 in relation to solar electricity generation, maintenance, monitoring and regulation related goods and services.
41. Justice Sunberg discussed the notion of a ‘family of trade marks’ in Scotch Whisky Association v De Witt[15](‘Scotch Whisky’) and noted the following comments in Re Application by Beck Koller & Co:[16]
When an application for registration is before the Registrar, it frequently happens that the search for conflicting marks reveals several marks having some characteristic feature in common with the mark of the application, which marks may stand on the register in the name of one proprietor only, or in the name of several different proprietors.
...
If, therefore, all the marks were owned by one proprietor, the Registrar would presume that the latter was using a ‘series’ of marks and judge the conflict between the applicants’ mark and each of the proprietor’s mark with this consideration in mind.
...
On the other hand, if the registered marks were owned by several different proprietors, this would be a circumstance which might considerably assist the applicant who would be in a position to submit that the common characteristic was one well recognised in marks in use in the particular trade. In short, when the Registrar comes to compare the applicant’s mark with the registered marks, ... the presence of marks on the register other than the one with which the comparison is being made is regarded as one of the surrounding circumstances which he is required to take into account.[17]
[15] [2007] FCA 1649, [74-81].
[16] (1947) 64 RPC 76 (Assistant Comptroller Chisolm).
[17] Ibid 83.
42. The Opponent also points to McD Asia Pacific LLC v Huseyin Dogan[18], where the Delegate referred to the above comments in Scotch Whisky and held that the Opponent “had the only registrations (and more importantly reputation through use) of the McXXX trade marks” for food and drink. Accordingly, the Delegate refused registration of McKebabs under s 60 on the grounds that use of McKebabs was likely to deceive or cause confusion in view of the Opponent’s reputation in a family of McXXX marks.
[18] [2014] ATMO 52, [34] (Hearing Officer I. Thompson).
43. There are no other registrations in evidence consisting of two words where the first word is SUNNY. The Applicant’s EIA references one mark, Australian number 1949166 SUNNY SOLAR in class 37 registration and acceptance of that trade mark has been revoked.
44. The Opponent submits that it has the only (or only significant reputation) in marks with the first element SUNNY in Australia at the Relevant Dates by virtue of its reputation in the Opponent’s Family of SUNNY Marks for the Opponent’s Goods and Services and contends that this reputation can be inferred from its high volume of sales, significant promotional and advertising activities, awards and third party reviews and references in publications.
45. The Applicant points to a number of third parties allegedly using a ‘SUNNY’ mark in the field of solar energy. One of these references is to a website of the Opponent (Sunny Places), another is a community volunteer group advocating for the adoption of solar power which does not trade commercially (Sunny Shire), another of the entities was registered after the Relevant Dates (Go Sunny Solar) and one was registered only a few months before the Relevant Dates (Sunny Money Energy). The businesses Sunny Sky Solar, Sunny Solar Cairns and Sunny Gold Solar were all registered some years before the Relevant Dates but there is no evidence as to the nature or extent of the operations of these businesses (or any of the other businesses) and hence it is not apparent whether any of these entities has extensively used a ‘SUNNY’ mark or could claim to have a reputation in such a mark in the solar industry.
46. The Opponent points to other decisions where the Opponent was found to have a reputation in the Opponent’s Family of SUNNY Marks namely SMA Solar Technology AG v Sunnygene Power Pty Ltd[19] (‘Sunnygene’) and SMA Solar Technology AG v Beyond Building Systems Pty Ltd (No 5)[20] (‘Beyond Building Systems’). In Sunnygene, the Delegate found that the Opponent had a strong reputation at the relevant date in its family of SUNNY marks for solar inverters and related installation and repair services such that use of the mark SUNNYGENE & Device for solar energy collection products was likely to cause confusion or deception. Justice Perram in Beyond Building Systems found the Opponent’s registration of SUNNY BOY for inverters was infringed by use of the mark SUNNY ROO (in word and logo forms) for inverters and installing of inverters and given the Opponent’s reputation in its mark SUNNY BOY, the infringing use also constituted misleading and deceptive conduct.
[19] [2022] ATMO 98 (Hearing Officer T. Brown).
[20] [2012] FCA 1483 (Perram J).
47. The Opponent owns a large number of registrations for marks containing ‘SUNNY’ as the first element in combination with another word. Although the Opponent’s evidence does not demonstrate use of all of these registered marks, it does show use of many of the marks across a range of products, particularly SUNNY BOY, SUNNY ISLAND, SUNNY BEAM, SUNNY WEBBOX, SUNNY HIGHPOWER, SUNNY CENTRAL, SUNNY TRIPOWER, SUNNY PORTAL and SUNNY DESIGN, amongst others to a lesser extent.
48. The Applicant argues that the Opponent’s evidence does not demonstrate a reputation in the Opponent’s Family of SUNNY Marks but rather shows the various ‘SUNNY’ marks are used in close proximity with the house brand SMA, and that the Opponent only promotes its services under the house brand.
49. Unsurprisingly, the trade mark SMA does appear frequently throughout the Opponent’s evidence but I consider that the Opponent’s SUNNY Family of Marks are often used as separate marks in close proximity to SMA and that there are also instances of use of SUNNY marks alone. The Opponent’s installation services appear to be primarily promoted under the SMA mark but the Opponent’s Family of SUNNY Marks are necessarily also used in relation to these services given its SUNNY products are being installed.
50. The Applicant criticized the Opponent’s evidence for including some examples after the Relevant Dates and/or which appear to be used overseas rather than in Australia. Firstly, I am satisfied that much of the evidence pertains to use of the Opponent’s Family of SUNNY Marks in Australia before the Relevant Dates. Further, evidence after the priority date “may cast light upon the true position at an earlier date”.[21] With respect to foreign use of the Opponent’s Family of SUNNY’ Marks, the Opponent submits that its global reputation operates in tandem with its Australian reputation as in Gain Capital UK Ltd v Citigroup Inc (No. 4).[22] I expect that many traders involved in the solar energy industry monitor news and developments overseas from market leaders like the Opponent.
[21][21] Conde Nast Publications Pty Ltd v Virginia Taylor 41 IPR 505, 509 [Burchett J).
[22] [2017] FCA 519, [159].
51. The Opponent has generated extremely significant sales revenue under the Opponent’s Family of Marks for a decade prior to the Relevant Dates. Although separate figures are not provided for different goods, it is apparent from the selection of invoices included in the EIS that a range of products have been sold and that the Opponent offers a wide variety of products and services in Australia under the Opponent’s Family of SUNNY Marks across different market segments. The Opponent has sold hundreds of thousands of inverters under its ‘SUNNY’ marks which provide 35% of Australia’s solar power indicating that the Opponent is a major player in the solar energy industry in Australia.
52. I am satisfied that the Opponent’s Family of SUNNY Marks constitutes a ‘family of trade marks’ of the sort envisioned by Sundberg J in Scotch Whisky and that the Opponent had a reputation in the Opponent’s Family of SUNNY Marks in Australia at the Relevant Date for the Opponent’s Goods and Services.
Likelihood of Deception or Confusion
The existence of reputation does not necessarily mean that confusion resulting from use of the Applicant’s Marks is likely to occur. There must be a nexus between the reputation in the Opponent’s Family of SUNNY Marks and the likelihood of confusion caused by use of the Applicant’s Marks. In Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd, Hearing Officer Lyons said:
The likelihood of confusion must depend on the reputation of the opponent's trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[23]
[23] [2010] ATMO 5, [39].
54. Accepting that the Opponent has a reputation in the Opponent’s Family of SUNNY Marks for the Opponent’s Goods and Services, the question is whether as a result of this reputation, use of the Applicant’s Marks for the Services is likely to deceive or cause confusion.
55. In Australian Postal Foundation Corporation v Digital Post Australia Pty Ltd it was noted that ‘the threshold for confusion is not high’.[24] Moreover, confusion can be established ‘even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale’.[25] The test for deception or confusion turns on whether use of the Applicant’s Marks would result in a reasonable number of people being caused to wonder whether the Applicant’s Services derive from the same trade source as another trade mark.
[24] [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).
[25] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105] (Dodds-Streeton J).
56. Whilst reputation is a required element of s 60 and a factor that informs the likelihood of confusion or deception under s 60(b), other relevant factors include the similarity of the trade marks and the connection between the relevant goods and services.
57. The Applicant contends that the word SUNNY is non-distinctive and hence consumers are unlikely to be confused between different ‘SUNNY’ Marks. The Applicant points to the Macquarie Dictionary (6th ed.) where one of the definitions of “sunny” is:
“3. Relating to or proceeding from the sun; solar”.
58. I find this definition surprising and other dictionaries[26] do not appear to provide such a meaning. I agree with the Opponent that ‘sunny’ and ‘solar’ are not synonymous. Further, if the Applicant’s contention that “sunny equates to solar, albeit in a more colloquial manner” then, as the Opponent points out, the Applicant’s Marks should not have been accepted for registration but rather faced a s 41 objection. Further, the Opponent is not seeking to claim a monopoly in all marks containing SUNNY but rather those with a similar format and context to its own family of marks where SUNNY is the first element.
[26] Meriam-Webster online dictionary; Oxford Dictionaries (online), Collins English Dictionary and MacMillan Dictionary.
59. I agree with the Opponent that the marks being compared in the present case are more similar than in Sunnygene where the applicant’s mark consisted of a single word, the suffix ‘gene’ had no reference to the goods and included a device element. In this instance, the only essential element of the Applicant’s Marks is the word ‘SUNNY’, it is the first word in each mark, and the other words ‘ENERGY’ and ‘AUSTRALIA’ are both descriptive. ‘SUNNY’ is an essential element of each of the marks in the Opponent’s Family of SUNNY Marks and is always used as the first element. Further, the Opponent sometimes combines SUNNY with a distinctive word (eg. BOY) and other times with a descriptive word (eg. PORTAL). In my view, the format of the Applicant’s Marks is the same as those of the Opponent and I am satisfied that there is sufficient similarity between the Applicant’s Marks and the Opponent’s Family of SUNNY Marks for confusion to occur.
60. Further, I regard the Applicant’s Services as the same or closely related to the Opponent’s Goods and Services. In Beyond Building Systems, in finding that Beyond Building Systems had engaged in misleading and deceptive conduct, Perram J commented:
Given the reputation that SMA has in the word SUNNY BOY in relation to their solar inverters, I have little doubt that putting the word SUNNY in front of the word ROO and affixing it on the same products was, as a marketing gesture, apt to suggest a connexion with SMA which, despite all of Sunny’s other demonstrable virtues, was not his to suggest….
I do not think that any different result obtains in respect of BBS’s use of SUNNY ROO to market other solar products (such as photovoltaic panels) or services (such as installation). It is true that these are different products, but they existed in a milieu so closely related to the one in which SMA’s reputation in the word SUNNY BOY inhered that to use SUNNY ROO in relation to solar inverters made confusion in the public mind inevitable. In the case of installation services, this effect is even more pronounced.
61. The Applicant’s Services all relate to the sale, distribution or installation of solar energy products. The Opponent has demonstrated a reputation in invertors and other solar energy related goods as well as, to a lesser extent, related services. I consider there to be a close association between the Applicant’s Services and those goods and services in which the Opponent has a reputation.
62. The Applicant’s Submissions point out that there have been no instances of actual confusion with the Opponent. However, it is apparent from the EIA, that the Applicant did not generally promote its Services under the Applicant’s Marks. No details about the extent of the Applicant’s business have been provided in terms of revenue or customer numbers but it appears that use has been fairly minimal at least until shortly before the Relevant Dates. Moreover, evidence of actual confusion is not required.[27]
[27] Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 117 FCR 189, [62] (Weinberg and Dowsett JJ); NEC Corp v Punch Video (S) Pte Ltd [2005] FCA 1126, [37] (Branson J).
63. Having regard to the reputation in the Opponent’s Family of SUNNY Marks, the similarity of the Applicant’s Marks and the close nexus of the Applicant’s Services to the Opponent’s Goods and Services, I am satisfied that there is a real and tangible likelihood that consumers would at least be caused to wonder whether the Applicant’s Services provided under the Applicant’s Marks might be connected to the goods and services in the solar energy field provided by the Opponent under the Opponent’s Family of SUNNY Marks.
64. The s 60 ground of opposition is established.
Decision
65. I find that the Opponent has established a ground of opposition under s 60. Accordingly, I refuse to register trade mark numbers 2071681, 2071692 and 2073806.
66. Both parties sought an award of costs. Costs generally follow the event and hence I award costs in respect of trade mark number 2071681 against the Applicant under s 221 in accordance with the amounts set out in Schedule 8 of the Regulations. In respect of trade mark numbers 2071692 and 2073806, I award reduced costs against the Applicant in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[28]
[28] [2001] ATMO 78.
Tracey Berger
Hearing Officer
Delegate of the Registrar of Trade Marks
17 August 2022
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