SMA Solar Technology AG v Beyond Building Systems Pty Ltd (No 5)  FCA 1483 (21 December 2012)
Respondents’ use of SUNNY ROO, SUNNY ROO PRODUCTS and two logos containing SUNNY ROO FROM BYRON BAY and SUNNY ROO AUSTRALIA for solar inverters and closely related installation services infringed the applicant’s trade mark registration for SUNNY BOY. The finding of deceptive similarity was not based on the word SUNNY being an essential feature, rather the likelihood of confusion arose from similarity based on overall impression and recollection. Significantly there was evidence of actual confusion. The judge considered that solar inverters were not similar goods to solar panels. It is worth noting that one of the respondents owned a trade mark registration for the SUNNY ROO FROM BYRON BAY logo which covered solar panels (but not solar inverters) and installation of solar energy systems. In addition to trade mark infringement, the respondents’ conduct constituted passing off as well as misleading and deceptive conduct under the Australian Consumer Law.