SMA Solar Technology AG v SUNNYGENE Power Pty Ltd
[2022] ATMO 98
•15 June 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 number 2000128 (classes 9, 37) – SUNNYGENE (with device) - in the name of SUNNYGENE POWER PTY LTD.
Delegate: Timothy Brown Representation: Opponent: Julian Cooke of Counsel instructed by Davies Collison Cave.
Applicant: Hui Chen.Decision: 2022 ATMO 98
Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44 and 60 considered – s 60 established – registration refusedBackground
This is an opposition brought by SMA Solar Technology AG (‘Opponent’) to the registration of the following trade mark:
Trade Mark Number: 2000128
Trade Mark:
Owner: SUNNYGENE POWER PTY LTD (‘Applicant’)
Priority Date: 01 April 2019
Specification: Class 9: Solar energy collectors for electricity generation; Solar energy operating apparatus
Class 37: Installation of solar energy systems
(‘Applicant’s Goods and Services’)
The Trade Mark was examined, accepted and then advertised for opposition on 23 September 2019.
The Opponent filed a Notice of Intention to Oppose on 25 November 2019 followed by a Statement of Grounds and Particulars on 12 December 2019. The Applicant filed a Notice of Intention to Defend on 23 March 2020.
On 16 September 2020, the Opponent filed Evidence in Support. The Applicant then filed Evidence in Answer on 27 December 2020. No Evidence in Reply was filed.
The parties were then given the opportunity to request a hearing. The Opponent requested a hearing, and the matter was listed to be heard on 17 March 2022. The Opponent was represented by Julian Cooke of Counsel, instructed by Ian Drew and Claire Groves of Davies Collison Cave. The Applicant was represented by Hui Chen.
Preliminary Issue
During the hearing, the Applicant sought to rely on the following material:
·Statements from Mingwen Zhang, director of the Applicant, regarding other trade marks incorporating the term ‘Sunny’.
·Statements regarding Applicant’s stakeholders never having raised issues of confusion between the Trade Mark and any of the Opponent’s trade marks with the Applicant.
·A Google extract showing the search results for ‘SMA Sunny’.
·A reference to 700 other registered trade marks incorporating the term SUNNY.
The Opponent objected to inclusion of this material in the hearing, noting the material was not included in the Applicant’s Evidence in Answer.
The Applicant’s written submissions contained no request for the consideration of this material or reasons why it should be considered. During the hearing, the Applicant submitted that they did not have the opportunity to file further evidence and following the evidence period were initially under the impression that no hearing had been requested. I note that a hearing was requested on 19 April 2021 by the Opponent, but also that a notice had been sent informing both parties that no hearing had been requested. Notice of the Opponent’s hearing request was subsequently sent to the Applicant on 4 May 2021.
Regulation 5.14 of the Trade Mark Regulations 1995 (Cth) (‘Regulations’) outlines the requirements and time periods for parties to file evidence:
·The opponent must file any evidence in support of the opposition within 3 months from the day the opponent is given a copy of the notice of intention to defend.
·The applicant must file any evidence in answer to the evidence in support within 3 months of the day the applicant is given all of the opponent’s evidence in support.
·The opponent must file any evidence in reply to the applicant’s evidence within 2 months of having been given all of the applicant’s evidence.
Notice of the end of the evidence period was provided to both parties on 19 March 2021.
Regulation 21.19 of the Regulations does afford the Registrar discretion to consider whether available information is relevant and should be considered in the course of making a decision. However, 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 Applicant’s material is of limited probative value. The statements made by Mr Zhang are not supported with evidence, or otherwise substantiated. In my view, consideration of this material is not crucial to the determination of the matter before me. Accordingly, I have not exercised my discretion to allow the new material into the hearing. The decision will be determined with regard to the evidence properly filed during these proceedings.
Evidence
Opponent
The Opponent’s evidence consists of a declaration made Dr Jürgen Reinert and Dr Matthias Victor dated 11 September 2020 (‘Reinert and Victor Declaration’).
Dr Reinert is the CEO of the Opponent, and Dr Victor is the Opponent’s Head of Innovation Center and IP.
Drs Reinert and Victor explain that the Opponent was founded in Germany in 1981. The Opponent is a manufacturer, retailer, and supplier of a range of solar inverters for photovoltaics systems. The Opponent has also been a provider of solar installations services. The Opponent developed its first inverter for photovoltaics in 1987 and has continued to operate in the fields of photovoltaics, storage systems and energy management over the last 35 years.
Drs Reinert and Victor declare that the Opponent first used the trade mark SUNNY in Germany in 1995, and subsequently in Australia in 1999. The declarants also explain that trade marks containing the element SUNNY have been used continuously in Australia since that date.
The Opponent is the owner of 55 registered trade marks in Australia. Exhibited in the Reinert and Victor Declaration are printouts of all of the Opponent’s Australian trade mark registrations that incorporate the word ‘SUNNY’:
Trade Mark
Trade Mark No.
Filing Date
Class
SUNNY CENTRAL
1092963
(IR Number 870806)
3 November 2005
9
SUNNY BOY
1109281
(IR 879508)
3 November 2005
9
SUNNY TRIPOWER
1262777
IR 973973
04 July 2008
(Priority date: 19 February 2008)
9
SUNNY BACKUP
12767426
18 July 2008 (Priority date: 4 February 2008)
9
SUNNY ISLAND
1274353
(IR No.982818)10 October 2008
9
SUNNY VIEW
1478989
28 November 2011 (Priority Date: 7 June 2011)
9
SUNNY PRO CLUB
1484489
5 April 2012
16, 35, 38, 41
SUNNY MULTIGATE
1522033 (IR No. 1132366)
11 July 2012 (Priority Date: 18 January 2012)
9
SUNNY HOME MANAGER
1522034 (IR No. 1132368)
11 July 2012
9
1533993 (IR No. 1142279)
28 September 2012 (Priority Date: 2 April 2012)
16, 35, 38, 41
SUNNY
1566498 (IR No. 1164565)
24 April 2013 (Priority Date: 26 October 2012)
9, 38, 42
SUNNY PORTAL
1634985 (IR No. 1209703)
19 August 2013 (Priority Date: 22 February 2013)
9, 38, 42
SUNNY PLACES
1665148
(IR No.1227529)
30 JUL 2014
(Priority Date: 19 February 2014)9, 38, 42
SUNNY TRIPOWERCORE
1836510
(IR No.1337314)18 JAN 2017
(Priority Date: 31 August 2016)9
SUNNY HIGHPOWER PEAK
1881238 (IR No. 1371269)
17 August 2017 (Priority Date: 22 February 2022)
9
SUNNY HIGHPOWER
1881239
17 August 2017 (Priority Date: 22 February 2022)
9
SUNNY DESIGN
1948934 (IR No. 856548
27 July 2018
9
(‘Opponent’s SUNNY Trade Marks’)
Drs Reinert and Victor declare that the Opponent’s SUNNY Trade Marks are used in connection with a diverse range of goods and services including:
· Solar panels and inverters.
· Software used in connection with the operation and monitoring of solar energy and electricity.
· Installation and repair of solar panels, solar inverters, solar generation systems and related software.
· Education and training in relation to solar panels, inverters, and solar generation systems.
(‘Opponent’s Goods and Services’)
Also exhibited in Reinert and Victor Declaration are examples of use of the Opponent’s SUNNY Trade Marks on or in relation to the Opponent’s Goods and Services.
The Opponent operates internet portals under the trade mark SUNNY PORTAL, which allows photovoltaic (‘PV’) system operators and installers to access system data and measure energy values. Drs Reinert and Victor declare that the Opponent’s PV monitoring system is the largest in the world with over 330,000 registered systems worldwide. Exhibited in the Reinert and Victor Declaration is a research report conducted by Green Tech Media entitled ‘Global PV Monitoring: Technologies, Markets and Leading Players, 2014-2018’ that cites the Opponent as the market leader in PV monitoring systems.
On 30 April 2014, the Opponent launched a mobile software application under the trade mark ‘SUNNY PORTAL’.
Drs Reinert and Victor declare that over 750,000 of the Opponent’s solar inverters have been installed in Australia, accounting for more than 35% of all solar electricity in Australia. The Opponent’s goods are also used in large scale solar projects in Australia. Exhibited in the Reinert and Victor Declaration are printouts from the Opponent’s Website showing use of the trade marks SUNNY HIGHPOWER and SUNNY CENTRAL on large scale solar power installations in Australia.
The Reinert and Victor Declaration exhibits annual reports, and sales data for the period of 2009 to 2019. The sales data includes the approximate sales revenue made from goods and services bearing the Opponent’s SUNNY Trade Marks in Australia and internationally.
The Opponent’s SUNNY Trade Marks have been marketed in Australia through a variety of means, including:
·The Opponent’s website (‘Opponent’s Website’). Exhibited in the Declaration are printouts illustrating the use of various SUNNY Trade Marks on the Opponent’s Website from the period of 2010 to 2019. The Opponent’s Website also features blog posts and press releases referencing the Opponent’s SUNNY Trade Marks.
·Promotional publications, namely ‘The Sunny Boy Info’ since 2002, and ‘SMA Magazine’ since 2010. The Opponent also publishes a newsletter entitled ‘Sunny News Australia’.
·Technical data sheets and brochures specific to each product sold under one of the Opponent’s SUNNY Trade Marks.
·Presentations and slide packs distributed to Australian companies.
·Various promotional events hosted by the Opponent from the period of 2010 to 2020 featuring either the Opponent’s full range of goods or specific products bearing the Opponent’s SUNNY Trade Marks.
·Paid advertisements featured in industry specific media publications, such as Circuit Magazine, Energy Source and Distribution Magazine, Green Magazine, All-Energy Australia, and L&H Traders publication.
Drs Reinert and Victor declare that since 2013 the Opponent has made use of social media to promote the Opponent’s SUNNY Trade Marks. Included in the Reinert and Victor Declaration are traffic statistics and screenshots from 4 September 2020 from the Opponent’s respective Facebook, Twitter, Instagram, LinkedIn and Youtube pages. The Opponent created its Youtube channel on 25 September 2008, which as of 4 September 2020 has received 6,041,052 views.
The Opponent’s SUNNY Trade Marks have featured in various third party media publications in Australia, such as the Sydney Morning Herald, The Age, The Advertiser, The Advocate and Wynnum Herald. The Reinert and Victor Declaration also includes a summary of industry awards won by the Opponent and accompanying press releases from the period of 2006 to 2012.
Drs Reinert and Victor declare that the Opponent operates various training and certification programs under the name ‘SMA Solar Academy’ (‘Opponent’s Academy’). The Opponent’s Academy runs sessions to the public featuring use of the Opponent’s goods with reference to the Opponent’s SUNNY Trade Marks. Exhibited in the Reinert and Victor Declaration are various screenshots of webinars and online sessions run by the Opponent’s Academy.
The Reinert and Victor Declaration includes various third-party product reviews discussing products sold bearing the Opponent’s SUNNY Trade Marks.
Applicant
The Applicant’s evidence consists of a declaration made by Mingwen Zhang on the 27 December 2020 (‘Zhang Declaration’).
Mr Zhang declares that the Applicant has been in operation since March 2019. The Applicant’s company name was registered with the Australian Securities and Investments Commission on 4 March 2019.
Mr Zhang explains that the Applicant does not manufacture or sell solar inverters. Mr Zhang declares that the Applicant has never received any information or questions about a conflict between goods bearing the Trade Mark and the Opponent’s SUNNY Trade Marks.
Mr Zhang declares that when he adopted the Trade Mark he was unaware of any of the Opponent’s Trade Marks.
Mr Zhang explains that there are similar cases of trade marks using the same words that coexist in the same industry. Exhibited in the Zhang Declaration are examples taken from the Australian Trade Mark Search system.
The Zhang Declaration exhibits, as evidence of its own operations, an invoice for a PV product sold by the Applicant, a letter of certification from the Clean Energy Council, and a letter regarding a development proposal in Queensland. Also exhibited in the Zhang Declaration are screenshots of the Applicant’s website and Mr Zhang’s LinkedIn page.
Grounds of Opposition, Onus and Relevant Date
The nominated grounds of opposition are sections 44, 60 and 42(b) of the Trade Marks Act 1995 (Cth) (‘Act’).
The Opponent bears the onus of establishing one or more of the grounds of opposition.[1] The required standard of proof is on the balance of probabilities.[2] The date at which the rights of the parties will be determined is the priority date of the Trade Mark, 01 April 2019 (’Relevant Date’).
Discussion and Reasons
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] ((Keane CJ, Stone and Jagot JJ).
[2] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Section 60
Section 60 of the Act provides:
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.
To establish this ground of opposition, the Opponent must establish:
·The existence of a reputation in another trade mark in Australia before the Relevant Date; and
·That use of the Trade Mark would be likely to deceive or cause confusion because of the reputation of the other trade mark.
Reputation
Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.[3] It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[4]
[3] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).
[4] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
There are a variety of ways the reputation of a trade mark may be established, including by demonstrating a significant number of people are exposed to the trade mark,[5] or providing evidence of high volume of sales,[6] advertising expenditure or other promotion of goods or services to which the trade mark applies.[7] There are also qualitative aspects to the reputation of a trade mark, which concern the value or esteem that the public hold for the trade mark.[8]
[5] Ibid [118].
[6] McCormick (n 3) [86].
[7] Ibid.
[8] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).
The Opponent relies on its suite of trade marks containing the term SUNNY, contending that at the Relevant Date the Opponent’s SUNNY Trade Marks had an extensive reputation in connection with the Opponent’s Goods and Services.
The Opponent refers me to the decision of Scotch Whisky Association v De Witt[9] (‘Scotch Whisky’) in which Justice Sundberg discussed the notion of a ‘family of trade marks’[10] and referred to the following remarks from Re Application by Beck Koller & Co[11]:
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.[12]
[9] [2007] FCA 1649 (Sundberg J).
[10] Ibid [74]-[81].
[11] (1947) 64 RPC 76 (Assistant Comptroller Chisolm).
[12] Ibid 83.
At the time of the above decision there was a requirement under section 60 for trade marks to be substantially identical or deceptively similar. This is no longer the case,[13] though the similarity of the relevant trade marks remains an important consideration.
[13] See: Trade Marks Amendment Bill 2006 (Cth).
In Scotch Whisky Sunberg J also referred to the decision of McDonalds Corporation v Bellamy[14] where the delegate of the Registrar of Trade Marks observed:
In the ‘family’ of trade mark cases, the trade marks of an opponent have been found to have a common element, usually a prefix, which is so thoroughly associated with the opponent’s goods or services that the use by another person of a trade mark incorporating that element, would deceive or confuse.[15]
[14] [2004] ATMO 26 (Hearing Officer Thompson).
[15] Ibid [28].
In the current matter, the Opponent owns a large number of trade mark registrations featuring SUNNY solus or as a prefix. Not all of those trade marks are represented in the Opponent’s evidence. To this point, the Applicant emphasises that SUNNY is not utilised solus by the Opponent. I note that the trade marks that feature most prominently in the Opponent’s evidence are SUNNY BOY, SUNNY TRIPOWER, SUNNY HIGHPOWER, SUNNY CENTRAL, SUNNY ISLAND, SUNNY PORTAL, and SUNNY DESIGN.
Unlike the situation in Scotch Whisky, the Applicant has not established that ‘SUNNY’ is in use or registered by different owners (other than the Applicant) in connection with the relevant goods and services.
The Applicant also submits that the Opponent’s SUNNY Trade Marks are frequently used with the trade mark SMA. While the trade mark SMA does feature prominently throughout the Opponent’s evidence, I am satisfied that there is sufficient use of the Opponent’s SUNNY Trade Marks either without SMA or in proximity to SMA as separate trade marks.
I note that in SMA Solar Technology AG v Beyond Building Systems Pty Ltd (No 5)[16], a decision that involved claims by the Opponent that use of the trade mark SUNNY ROO constituted passing off or infringement of its various SUNNY Trade Marks, Justice Perram found that the Opponent’s trade mark SUNNY BOY had substantial goodwill and a reputation in connection with solar inverters.[17]
[16] [2012] FCA 1483 (Perram J).
[17] Ibid [15], [28].
The Opponent’s sales data refers to sales revenue for goods and services bearing the Opponent’s SUNNY Trade Marks collectively from 2009 to 2019, and does not detail the revenue for each of its separate trade mark registrations. Nevertheless, the figures provided are substantial by any measure, and demonstrate that a considerable number of goods bearing the Opponent’s SUNNY Trade Marks have been sold in Australia.
I am satisfied that the evidence provided by the Opponent establishes that at the Relevant Date the Opponent’s SUNNY Trade Marks collectively had a strong reputation in relation to solar inverters and related installation and repair services. The Opponent’s substantial sales revenue is supported by a range of extensive promotional activities, industry awards and third party references to the Opponent’s SUNNY Trade Marks. I note that the use of ‘SUNNY’ as a prefix is consistent throughout the demonstrated use of the Opponent’s SUNNY Trade Marks in Australia. Through the use and promotion of its various SUNNY Trade Marks, the Opponent has, in my view, built a recognition in the minds of consumers between itself and trade marks incorporating the prefix ‘SUNNY’ for solar inverters and associated installation and repair services.
Likelihood of Deception or Confusion
Section 60(b) requires a causal connection between the reputation of the Opponent’s SUNNY Trade Marks and the likelihood that use of the Trade Mark will deceive or cause confusion. The ground of opposition under section 60 is only established if the reputation of the Opponent’s SUNNY Trade Marks is such that the use of the Trade Mark would likely result in a real or tangible danger of deception or confusion.
The concept of ‘deceive’ and ‘cause confusion’ was explained by Richardson J in the New Zealand decision of Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd[18]:
‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[19]
[18] [1979] 19 RPC 410.
[19] Ibid 423.
The test for deception or confusion turns on whether use of the Trade Mark would result in a reasonable number of people being caused to wonder whether the Applicant’s goods or services derive from the same trade source as another trade mark.[20] A number of factors are relevant to this determination, including the strength of the reputation of the other trade mark, the similarity between the relevant goods or services, and the degree of similarity between the trade marks.[21]
[20] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50] (French J).
[21] Qantas Airways Limited v Edwards [2016] FCA 729, [142] (Yates J).
With respect to the similarity of the trade marks, the Applicant draws a comparison between the current matter and the High Court decision of Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd[22] (‘Cooper Engineering’). The decision involved the involved the question of whether the trade marks ‘RAINMASTER’ and ‘RAINKING’ so nearly resembled one another as to be likely to deceive. The High Court held that the similarity stemming from the prefix ‘RAIN’ was not enough a create a reasonable likelihood of deception when the remaining features of the trade marks were so distinct.[23] It is important to note that the current circumstances differ in a key way from those in Cooper Engineering. The comparison involved in the current matter is under section 60 of the Act and is informed by the reputation that the Opponent has established in its family of SUNNY Trade Marks. Reputation was not a factor before the court in Cooper Engineering.
[22] [1952] HCA 15 (Dixon, Williams and Kitto JJ).
[23] Ibid [3].
The Applicant also submits that the shared element ‘SUNNY’ is a descriptive word, and that non-distinctive elements are less likely to be taken as an indication of the origin of the goods or services. Conversely, the Opponent submits that even if ‘SUNNY’ is considered descriptive, it does not preclude confusion occurring between the Trade Mark and the Opponent’s Trade Mark. While I accept that the word ‘sunny’ describes a state of weather, I am less convinced that the term lacks the distinctiveness to function as a badge of origin, particularly noting the Opponent’s extensive use of the term in its trade marks. Furthermore, no evidence has been provided by the Applicant showing use of ‘SUNNY’ by other traders in a manner that would suggest a legitimate desire for other traders to use ‘SUNNY’ for the ordinary meaning it possesses.
The Trade Mark consists of the word SUNNYGENE and a prominent device element. The Applicant explained that ‘GENE’ was intended to indicate ‘generation’, and while this may have been the Applicant’s intent, I am not convinced that this would be the understanding of most consumers. Nevertheless, I accept that in the context of solar goods and services, the suffix is distinctive. The suffix ‘GENE’ and the device element afford the Trade Mark a degree of visual and aural distinction from the Opponent’s Trade Marks. However, ‘SUNNY’ is an essential feature of the Opponent’s SUNNY Trade Marks, and notably, is the consistent element across all of the collective of the Opponent’s SUNNY Trade Marks. Although the Trade Mark is represented as a single word, both ‘SUNNY’ and ‘GENE’ are recognised English words. Australian consumers are likely to view, understand and pronounce the Trade Mark as ‘Sunny Gene’. The Applicant also pointed to the visual differences between the Trade Mark as a whole and the composite trade marks used by the Opponent. However, I note that the use of the Opponent’s Trade Marks is not limited to its composite variations and that the plain word representation of the Opponent’s SUNNY Trade Marks was commonly featured throughout the Opponent’s evidence. As with the Opponent’s Trade Marks, ‘SUNNY’ is incorporated within the Trade Mark as a prefix. While this similarity may not necessarily have been enough for the trade marks to be considered deceptively similar, when factoring in the reputation of the Opponent’s family of SUNNY Trade Marks, I am satisfied that there is sufficient similarity for confusion to occur.
Justice Perram stated in SMA Solar Technology AG v Beyond Building Systems Pty Ltd (No 5)[24] that:
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.[25]
[24] [2012] FCA 1483 (Perram J).
[25] Ibid [29].
I also note that SUNNY ROO was held to be deceptively similar to SUNNY BOY under section 120 of the Act.[26]
[26] Ibid [63]-[64].
The Applicant submits that the more expensive the goods being considered, the less likely the purchaser is to be deceived or confused by similarities between the trade marks. In support of this, the Applicant notes the absence of any evidence of confusion between the Trade Mark and any of the Opponent’s Trade Marks. Although such evidence would be probative, evidence of confusion between the opposed trade mark and the Opponent’s trade mark is not a requirement of section 60, and its absence does not indicate that confusion between the trade marks would be unlikely. However, I do accept that consumers are likely to be more conscientious of their purchases when dealing with expensive goods, such as solar products.
I recognise a distinction between solar inverters and the solar energy collection products specified in the Applicant’s Goods and Services. An inverter converts an electric current, it does not generate or collect power. However, although they are not the same products, the Applicant’s Goods and Services exist in the same solar energy market as the goods for which the Opponent’s SUNNY Trade Marks have a reputation. I do not consider the difference between the goods sufficient to mitigate the likelihood of confusion between the Trade Mark and the Opponent’s SUNNY Trade Marks.
Considering all of the above, and the reputation of the Opponent’s SUNNY Trade Marks, I am satisfied that there would be a real tangible danger that use of the Trade Mark would result in confusion.
The section 60 ground of opposition has been established.
Having found in favour of the Opponent under section 60 of the Act, there is no need to discuss the other grounds set out in the SGP. However, all of the grounds of opposition may be relied on in the event of an appeal from this decision.
Decision
Section 55(1) provides:
Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
The Opponent has established the ground of opposition under section 60 of the Act. Accordingly, I refuse to register trade mark application number 2000128.
Costs
The Opponent sought costs. As the Opponent has been successful in the opposition, I award costs against the Applicant under section 221 of the Act in accordance with Schedule 8 of the Regulations.
Timothy Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
15 June 2022
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