Jacuzzi Inc v Jazzi Pool & Spa Products Co., Ltd

[2011] ATMO 39

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by JACUZZI INC to registration of trade mark application 1210627 (11) - JAZZI POOL AND SPA PRODUCTS WITH LEAF AND WATER DROP DEVICE - filed in the name of JAZZI POOL & SPA PRODUCTS CO., LTD.

Delegate:

Bianca Irgang

Representation:

Opponent: Ms Fiona Brittain of Davies Collison Cave

Applicant: Not present at the hearing

Decision:

2011 ATMO 39

Section 52 opposition: sections 44 and 60 pressed – s 60 ground of opposition established for all goods - use of the applicant’s trade mark likely to deceive or cause confusion - no requirement to consider other grounds - Costs awarded against the applicant.

Background

1.     Jazzi Pool & Spa Products Co., Ltd. (‘the applicant’), filed application number 1210627 on 16 November 2007 in class 11 of the International Classification of Goods and Services. Current details of the application are set out below.

Trade mark:  

Trade mark application:              1210627

Filing Date:  16 November 2007

Specification:  Class 11: Water filtering apparatus; water purification installations; desalination plants; waste water treatment installations; swimming pools chlorinating units; hydrants; hot air bath fittings; sauna bath installations; toilet seats; whirlpool-jet apparatus

2.     Jacuzzi Inc (‘the opponent’) filed a Notice of Opposition (‘the Notice’) on 19 June 2008 to registration of the application. Thereafter the parties served and filed evidence in accord with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

3.     I heard the matter in Canberra as a delegate of the Registrar of Trade Marks on 9 February 2011. The opponent was represented by Ms Fiona Brittain of Davies Collison Cave. The applicant was not present at the hearing.

Grounds of Opposition

4.     The Notice nominated most of the grounds of opposition under the Trade Marks Act 1995 (‘the Act’).  However, only those grounds under subsections 44 and 60 were pursued at the hearing.

5.     The onus is upon the opponent to establish at least one of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2]. As a formal matter, I note the remaining grounds listed in the Notice have not been established.

[1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599;

[2] [2009] FCA 891, para 22-27

Evidence

6.     The evidence of the parties consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Anthony Lovallo	Vice President and General Counsel for Jacuzzi Inc.	14 July 2009	AL-1 to AL-8
Evidence in Answer
Yu Xiaoling	Director and General Manager of Jazzi Pool & Spa Products Co., Ltd.	9 December 2009	YXL-1 to YXL-9
Evidence in Reply
Paul Edwards	Asia Pacific Regional Manager of Jacuzzi Brands Corp.	5 July 2010	PE-1 to PE-5

Applicant’s Evidence

7.     In the statutory declaration made by Yu Xiaoling (‘the Yu declaration’) it is alleged the applicant is a leading Asian manufacturer of pool and spa products which includes swimming pool filtration systems, household filters and pumps, water processing equipment, spas and steam rooms. The Yu declaration states that the applicant’s headquarters are in Guangzhou, China where it owns a more than 800 000 square feet production plant comprising 8 separate factories which manufacture its products.

8.     The Yu declaration also states that the word JAZZI in the trade mark was devised in 1999 by designer Mr Li Zhike. The word JAZZI was derived from the two Chinese characters “” out of the Applicant’s Chinese Company name “”. According to the Yu declaration the two Chinese characters are pronounced as “JUE SHI” and are similar to the Chinese characters “” which may be translated into the English word JAZZ. In fact, “” is the variation of “” and both are pronounced as “SHI”. Therefore, the Yu declaration states that Mr Zhike devised the word JAZZI as it sounds similar to “JUE SHI” and “JAZZ” just as “” looks and sounds similar to “”.

9.     The Yu declaration further states that since the creation of its trade mark it has used the mark “” and the JAZZI mark, usually together, for its pool and spa products first in China and then other countries. In 2004 the applicant commenced developing its overseas markets and Mr Li Zhike was instructed to use the word JAZZI to design a new trade mark. On 28 August 2004, Mr Li Zhike finalized the design and created the opposed trade mark. The Yu declaration asserts that since this time the applicant has been using its trade mark in respect of pool and spa products. Exhibit YXL-1 demonstrates the applicant is using the opposed trade mark on its website

10.   According to the Yu declaration, the applicant has been exporting its massage bathtub, swimming pool and spa products to Australia since at least 22 November 2006.  Exhibit YXL-4 contains a bill of lading concerning the applicant’s export of massage bathtubs to Australia on 22 November 2006.  However, there is no additional evidence to support the applicant’s assertions of regular and continuous sales of its JAZZI branded spa and pool products in Australia.

Opponent’s Evidence

11.   According to the information provided by Mr Lovello in his declaration (‘the Lovello declaration’) and accompanying exhibits, the opponent’s JACUZZI whirlpool baths have been marketed to consumers since as early as 1955. The opponents evidence states that the company’s founders named Jacuzzi invented the whirlpool spa bath in the 1950s (exhibit AL-2). The Lovello declaration also outlines the Australian Distribution Agreements that the opponent has entered into. These agreements date from 1960 until the present (exhibit AL-3).

12.   The opponent is also the owner of a number of trade mark registrations in Australia which all have earlier priority dates than the opposed trademark. The relevant details of the opponent’s trade mark registration are as follows:

Trade Mark Registration No.	Classes	Trade Mark
325302	10
414700	19	JACUZZI
414701	11	JACUZZI
414702	10	JACUZZI
414703	7	JACUZZI
416355	41	JACUZZI
705471	11
1047949	6, 7, 10, 11, 19, 20, 21, 37, 41, 44
1047950	6, 7, 10, 11, 19, 20, 21, 37, 41, 44	JACUZZI
1095049	11	JACUZZI SPAS

13.   According to Mr Lovello outdoor spa pools sold under the opponent’s JACUZZI trade mark are sold in Australia directly to the public or builders, developers and architects. The current retail price for outdoor spa pools sold in Australia under the JACUZZI trade mark is between $7 000 to $20 000. The Lovello declaration sets out the approximate annual wholesale figures of outdoor spa pools bearing the JACUZZI trade mark in Australia from 2002 until 2008.

14.   The opponent’s evidence also demonstrates that its JACUZZI branded products have been promoted in Australia in a number of ways including price lists, catalogues, print materials, flyers, brochures, print advertisements, websites, radio advertisements, Swimming Pool and Spa shows.  Exhibit AL-7 is a selection of some of these promotional materials.  While a number of these materials are undated, I note that the Australian price list is dated 1990 and that a number of the catalogues are dated from 1994 to 1995.

Section 60     Trade mark similar to trade mark that has acquired a reputation in Australia

15. Section 60 of the Act provides:

60          Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

16. To establish the ground of opposition under section 60, the opponent must demonstrate:

ØThat, at the priority date of the opposed application, another trade mark had acquired a reputation in Australia; and

ØThat because of the reputation of the second trade mark, use of the applicant’s trade mark would be likely to deceive or cause confusion.

17. Section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods and services of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. It is now for me to determine if the opponent has acquired a reputation in Australia for its JACUZZI trade mark which is sufficient to establish that use of the opposed JAZZI trade mark would be likely to deceive or cause confusion. This is more than merely indicating prior use, the opponent’s trade mark needs to be “associated in the minds of the Australian public”[3].

[3] Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211

18.   In relation to reputation Justice Kenny states in McCormick & Co Inc. v McCormick, 51 IPR 102, at 128:

In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

At 129 Justice Kenny continues:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …

19.   Turning to the opponent’s evidence it is clear that the opponent has been offering goods bearing its JACUZZI trade mark for sale in Australia since 1960. Exhibit AL-7 contains a number of promotional materials dated from 1990 to 2005. It is clear from this evidence that the opponent has been using its JACUZZI trade mark in Australia before the priority date of the opposed trade mark.

20.   Since 2002 the wholesale value of goods sold to Australian distributors for sale in the Australian marketplace was fairly low. The opponent referred me to the Trade Marks Office’s decision in Hugo Boss AG v Jackson International Trading Company[4] where it is stated:

I think that it is true that the assessment of the reputation of a trade mark goes beyond mere examination of sales or turnover of goods sold under the trademark and contemplation of the advertising and promotional figures. As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark … it follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held.

[4] (1999) 47 IPR 423

21.   I am in agreement with this decision. While it is true that the opponent has only made relatively small sales of its JACUZZI branded products in Australia for the last few years, it is clear that its goods are offered for sale in a niche market. I also note from the evidence that the opponent’s goods have been offered for sale continuously to Australian consumers for at least 50 years. Taken together with the promotional material I am satisfied that the opponent had a significant reputation in Australia for its JACUZZI trade marks before the priority date of the opposed trade mark. However, it needs to be determined if, given this reputation in Australia, use of the applicant’s trade mark would be likely to deceive or cause confusion.

22.   For the necessary comparison, I would put the matters as follows. I am not to be overly influenced by the evidence that the disputing parties use their trade marks in ways that, at the moment, may be quite different. I am to consider any of the modes of business that would be within the scope of the registration, should it be granted in the terms presently sought. In essence, the question comes down to my being satisfied that there is a “finite and non-trivial” risk of deception or confusion[5], based on the proper allowance for the possibility of imperfect recollection of one trade mark at a time when only the other competing trade mark is present.

[5] Registrar of Trade Marks v Woolworths Limited (1999) AIPC 91-499 at 36, 697-8 (per Justice French) and 39, 703-4 (per Justice Branson)

23. As mentioned earlier, section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However, in this particular case, I believe it is necessary to consider the similarities between the trade marks. This is because there is more likely to be deception and confusion in the market place in the situation where the respective marks are applied to the same or similar goods and services[6] and the trade marks share a commonality of features.

[6] Shachihata Industrial Co Ltd v. Magic Market Corp (1984) 3 IPR 519

24.   There can be little doubt that the goods claimed by the parties are similar. Indeed, the evidence of both parties demonstrates that they both retail spa baths. I am satisfied that the applicant and the opponent are likely to sell their spa baths and other goods through the same trade channels to the same type of customer, that is, those looking to purchase spa baths etc.

25.   A comparison of the respective trade marks reveals that the most striking features of the trade marks are the terms JAZZI and JACUZZI. While the applicant’s trade mark also has the additional words “POOL AND SPA PRODUCTS” and a graphic device, the most prominent feature of the trade mark is the term JAZZI which is depicted in a large and eye-catching font.  In comparing the words JAZZI and JACUZZI it is clear that they both start with the same two letters and end with the same three letters. It is true that JACUZZI has an additional two letters “CU” in the middle of the word and that because of these additional letters the two words are likely to be pronounced differently. However, I am not satisfied that these differences are sufficient to prevent consumers from becoming confused between the two trade marks.

26.   Ms Brittain, counsel for the opponent, argued that the similarities referred to above give rise to a serious risk of contextual confusion. She submitted that contextual confusion is likely to occur in the sense that consumers are likely to consider that goods sold by reference to the respective marks emanate from the same trade source because JAZZI is likely to be seen as a contraction of JACUZZI. Ms Brittain drew my attention to Schweppes Limited v. Rowlands Pty Ltd (1913) 16 CLR 162 to support her argument.

27.   Ms Brittain also referred to Kodak (A’asia) Pty Ltd’s Application (1936) 6 AOJP 1724 (Reg) where the mark HYPERPAN was refused registration on the basis that it was considered likely to indicate photographic goods, having characteristics of “Pan” goods, but to an accentuated degree.  Ms Brittain applied this reasoning to the present situation by suggesting that consumers may consider the mark JACUZZI and JAZZI to be related and that JAZZI refers to a new or updated product line in the JACUZZI product range, for example, a smaller less expensive version of an existing model or a model with new technical features or a more modern look to appeal to a younger market. It is likely that a casual observation of the two marks will induce traders and the public into believing the two marks emanate from the same trade source[7] or are in some way associated with each other. I believe that it is likely that a consumer with knowledge of the JACUZZI trade mark who saw the trade mark JAZZI on same/similar goods would link it to a memory of association with the word JACUZZI.

[7] John Fitton & Co. Ltd’s Application 66 RPC 110, per Assistant-Comptroller Chisholm at 113.

28.   Ms Brittain argued that consumers who know of the JACUZZI product upon seeing a similar spa product selling under the name JAZZI would be quite likely to think that it was a particular version of the JACUZZI product. She submitted that the risk of contextual confusion occurring is enhanced because JACUZZI is an unusual and memorable brand. I agree with this argument.

29.   Overall, I consider that, given the reputation evidenced by the opponent in its JACUZZI trade mark both overseas and in Australia, a significant number of consumers would at the very least experience a reasonable doubt[8] as to the existence of some sort of connection between the JACUZZI trade mark and the applicant’s JAZZI trade mark, particularly when these trade marks are applied to similar goods. 

[8] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

30. I am satisfied that the opponent has established the section 60 ground of opposition in relation to all the applicant’s goods. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds set out in the notice although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

Decision

31. Section 55 of the Act provides:

Decision

Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

(a) to refuse to register the trade mark; or

(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

32. I find that the opponent has met the onus upon it, in terms of the grounds of opposition under section 60 argued at the hearing. I refuse to register trade mark application 1210627.

Costs

33. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the trade mark applicant Jazzi Pool & Spa Products Co., Ltd.

Bianca Irgang

Hearing Officer

Trade Marks Hearings

12 May 2011