SMA Solar Technology AG v Beyond Building Systems Pty Ltd (No 5) [2012] FCA 1483

FEDERAL COURT OF AUSTRALIA

SMA Solar Technology AG v Beyond Building Systems Pty Ltd (No 5) [2012] FCA 1483 Citation: SMA Solar Technology AG v Beyond Building Systems Pty Ltd (No 5) [2012] FCA 1483

Parties: SMA SOLAR TECHNOLOGY AG and SMA AUSTRALIA PTY LTD ACN 127 198 761 v BEYOND BUILDING SYSTEMS PTY LTD ACN 128 030 302 and IPEVO PTY LTD ACN 143 970 978

File number: NSD 817 of 2011

Judge: PERRAM J

Date of judgment: 21 December 2012

Catchwords: TRADE PRACTICES – Passing off – misleading or deceptive conduct – where maker and distributor of SUNNY BOY solar inverters claimed that the first respondent's solar products and related services that used the name SUNNY ROO (and associated logos) constituted passing off and misleading or deceptive conduct – whether applicants had goodwill in the SUNNY BOY name – whether conduct of first respondent suggested a connexion with the applicants that did not exist – whether conduct was capable of causing damage to the applicants' goodwill – whether it had done so – whether the word 'sunny' was no more than an adjective and thus unable to mislead or deceive in the manner alleged TRADE PRACTICES – Passing off – misleading or deceptive conduct – accessorial liability – whether second respondent was liable for the conduct of the first respondent – where maker and distributor of SUNNY BOY solar inverters claimed that the first respondent's solar products and related services that used the name SUNNY ROO (and associated logos) constituted passing off and misleading or deceptive conduct – where first and second respondents had a common director – where second respondent had licensed certain trade marks to first respondent – whether licence included the conduct complained of – whether second respondent was 'knowingly concerned' with first respondent's conduct – whether Jones v Dunkel inference should be drawn when assessing second respondent's knowledge TRADE MARKS – infringement – where maker and distributor of SUNNY BOY solar inverters claimed that the first respondent's solar products and related services that used the name SUNNY ROO (and associated logos) constituted trade mark infringement – whether use of SUNNY ROO in respect of solar inverters constituted trade mark infringement under s 120(1) of the Trade Marks Act 1995 (Cth) – whether use of SUNNY ROO in respect of other solar products and solar services constituted trade mark infringement under s 120(2) – consideration of the factors to be taken into account when determining deceptive similarity