SMA Solar Technology AG v Beyond Building Systems Pty Ltd ACN 128 030 302

REASONS FOR JUDGMENT 1 There are before the Court two applications. The first is an application pursuant to s 500(2) of the Corporations Act 2001 (Cth) for leave to proceed against the first respondent, such leave being necessary because of its having been placed in a creditor's voluntary winding up on 20 March 2012. The second application is an application to amend the applicant's application and statement of claim as against both respondents. 2 The proceedings concern intellectual property relating to items known as solar inverters. The first applicant conducts an international business in respect of such inverters and the second applicant, which was incorporated by the first applicant, imports and carries on business in relation to those solar inverters in this country. 3 The business of the two applicants is conducted by reference to various names, principally including the word "Sunny". There are, for example, products marketed by reference to the words "Sunny Beam", "Sunny Central" and "Sunny Boy". The first applicant not only conducts its business overseas and in this country by reference to those names but is also the proprietor of certain trademarks, also featuring the word "Sunny". The applicants allege that since early 2010 or thereabouts, the first respondent had sold solar products under the name "Sunny Roo". The applicants allege that this conduct constitutes passing off, breaches of various statutory requirements relating to misleading and deceptive conduct and also trademark infringement. As against the second respondent, it is put that it has been accessorily involved in the breaches by the first respondent. 4 On 20 March 2012, the second respondent went into a creditor's voluntary winding up and a Mr Bettles and a Mr Worrells were appointed liquidators. The principles relating to whether there should be a grant of leave under provisions analogous to s 502 are established: see Ogilvie Grant v East (1983) 1 ACLC 742 at 743-5 per McPherson J (Wanstall CJ and Sheahan J concurring) and Vagrand Pty Ltd (in liq) v Fielding (1993) 41 FCR 550 at 554-6 per Wilcox, Burchett and Beazley JJ. See also Altinova Nominees Pty Ltd v Leveraged Capital Pty Ltd (Receivers and Managers Appointed) (in liq) (No 2) [2009] FCA 42 at [17]-[23] per Jacobson J. As counsel for the applicant put it, the question of whether leave should be granted is largely one of choosing between alternative forms of procedure; on the one hand, court proceedings and, on the other, submission of a proof of debt in the winding up. The applicant for leave is required to demonstrate some good reason for departing from the proof of debt procedure. In this case, Mr Darke of counsel, who appeared for the applicants, put that it was appropriate to depart from the proof of debt procedure for four reasons. 5 The first was that the claim against the first respondent raised a serious question to be tried. I accept this submission. 6 The second was that insofar as the second respondent was concerned, it was going to be an inevitable feature of the suit that the applicants would be required to prove the first respondent's breaches. In any event, regardless of whether the first respondent takes part in the eventual hearing or not, to that I think may be added the additional risk that if the Court were to require the claim against the first respondent to proceed by way of the proof of debt procedure, there is raised the possibility that there could be inconsistent findings in the proceedings against the second respondent about the role of the first respondent. It seems to me that the concern raised by the applicants in relation to this matter is well founded. 7 The third matter relied upon the applicants was the undoubted fact that the proceedings have been on foot since 1 June 2011, the evidence of all parties is now complete and the matter has been fixed for hearing for five days commencing on 17 September 2012. A consequence of now consigning to the proof of debt procedure the claims against the first respondent would be, in my opinion, a large degree of waste in relation to legal expenses already incurred. 8 The last point put by Mr Darke was that the proceedings were of some complexity and involved questions of subtlety which would be unsuited to the present debt procedure. I accept that submission. 9 In all those circumstances, it is appropriate to grant leave to proceed against the first respondent to the applicants, pursuant to s 500(2) of the Corporations Act. 10 I turn then to the applicant's application to amend their pleadings. The amendments are largely of a machinery nature. They now seek to add, by way of two new prayers to the application, a claim for declaratory relief as well as certain claims for injunctive relief specific to the second respondent. The second respondent who appeared today did not oppose, subject to the usual order, a grant of leave to amend. The pleadings which are proposed do not require the leading of additional evidence, do not destabilise the hearing which has been fixed and are, in my opinion, otherwise appropriate for a grant of leave. 11 In those circumstances, I will grant leave to the applicants to amend their application and statement of claim in the form annexed as OMG-8 and OMG-9 to the affidavit of Odette Margaret Gourley, sworn 17 April 2012. This is to be done by 8 May 2012. 12 I order the applicants to pay the second respondents costs thrown away by reason of the amendment. The costs of the application to proceed against the first respondent will be costs in the cause. I certify that the preceding twelve (12) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perram.