SMA Solar Technology AG v SUNNYGENE Power Pty Ltd

This matter concerned an opposition by SMA Solar Technology AG (the Opponent) to the registration of trade mark application number 2000128 by SUNNYGENE Power Pty Ltd (the Applicant). The dispute arose from the Opponent's claim that the Applicant's proposed trade mark was deceptively similar to its own registered trade marks and that registration would be contrary to section 60 of the *Trade Marks Act 1995* (Cth). The decision was made by Timothy Brown, a Delegate of the Registrar of Trade Marks.

The primary legal issue before the Delegate was whether the Applicant's trade mark application should be refused registration on the grounds of opposition raised by the Opponent. Specifically, the Delegate was required to determine if the Opponent had established any of the grounds of opposition, with a focus on section 60 of the Act, which deals with the registration of trade marks that are deceptively similar to earlier trade marks or trade names. The Delegate also considered the admissibility of new evidence submitted by the Applicant, ultimately deeming it to have limited probative value and not crucial to the determination.

The Delegate found in favour of the Opponent under section 60 of the Act. The Opponent provided evidence demonstrating its long-standing use of trade marks incorporating the element "SUNNY" in Australia since 1999, in connection with a diverse range of goods and services related to solar energy, including solar panels and inverters. The Opponent also presented evidence of its market leadership in PV monitoring systems. Based on this evidence, the Delegate concluded that the Applicant's proposed trade mark was deceptively similar to the Opponent's earlier trade marks, leading to a likelihood of confusion among consumers.

Consequently, the Delegate refused to register the Applicant's trade mark application number 2000128. As the Opponent was successful in its opposition, the Delegate awarded costs against the Applicant in accordance with the relevant regulations.