Wuxi Suntech Power Co Ltd v Jinko Solar Co., Ltd

This matter concerned an opposition by Wuxi Suntech Power Co., Ltd (the Opponent) to the registration of the trade mark SUNTANK (application number 2273745) in class 9, filed by Jinko Solar Co., Ltd (the Applicant). The opposition was heard by Anne Makrigiorgos, Hearing Officer and Delegate of the Registrar of Trade Marks.

The primary legal issue before the Hearing Officer was whether the Applicant had applied to register the SUNTANK trade mark in bad faith, as alleged by the Opponent under section 62A of the relevant legislation. The Opponent contended that the application was a deliberate misspelling of its SUNTECH mark, filed in anticipation of its entry into the Australian market and in light of the prominence of its mark in China. The Applicant countered that SUNTANK was not a misspelling, that the marks were distinct, and that mere knowledge of a prior mark did not, in itself, demonstrate bad faith.

The Hearing Officer applied a combined subjective and objective test for bad faith, noting that it requires conduct that is unscrupulous, underhand, or unconscientious, and not merely negligent or imprudent. The onus was on the Opponent to establish bad faith, which is not found easily. The Hearing Officer found that even if the Applicant was aware of the Opponent's registrations or use of its mark, this alone was insufficient to establish bad faith. Furthermore, the Opponent had not evidenced any reputation for its SUNTECH mark in Australia, making it unlikely that the Applicant was attempting to trade off that reputation. Consequently, the Opponent failed to establish the ground of opposition.

The Hearing Officer decided that trade mark application number 2273745 could proceed to registration, subject to the usual one-month period for appeal. The Applicant was awarded costs against the Opponent.