SMA Solar Technology AG v Sunny Sign Company Pty Ltd

This matter concerned an opposition by SMA Solar Technology AG (the Opponent) to the registration of the trade mark "SUNNY SIGNS" by Sunny Sign Company Pty Ltd (the Applicant). The Opponent, a global leader in photovoltaic inverters, opposed the application based on its existing registrations of a "family of SUNNY marks" used in relation to solar technology products. The Applicant, incorporated in 2000, manufactures and supplies road traffic and industrial safety signs and accessories.

The primary legal issue before the Hearings Officer was whether the Opponent had established grounds for opposition under subparagraph 42(b) of the relevant Act. This required the Opponent to demonstrate that its use of the "SUNNY" mark in relation to its goods and services was likely to cause confusion or deceive the public, given the Applicant's proposed use of "SUNNY SIGNS" for road safety products. The Opponent also needed to establish that its grounds of opposition were valid as at the date of filing the application for registration.

The Hearings Officer found that the opposition was not established. The evidence presented by the Opponent, including company reports, survey data, and details of its "SUNNY" marks, primarily related to solar technology. While the Opponent had used its marks in Australia since 1999, the evidence did not demonstrate any overlap or likelihood of confusion with the Applicant's business of manufacturing road traffic and safety signs. The Applicant's evidence highlighted that it was not in the business of solar technology products and was unaware of the Opponent being involved in road safety signs.

Consequently, the Hearings Officer decided to register the trade mark application. The Applicant was awarded its costs against the Opponent.