It was a battle of the “King” trade marks, when the Storage King companies (together Storage King) recently opposed trade mark applications of King Arthurs Storage Pty Ltd (KAS) for KING ARTHURS (word mark) and the following KING ARTHURS STORAGE Logo (together King Arthurs Marks):
Storage King prevailed under s60 of the Trade Marks Act, 1995 (Act), for the purpose of which it relied on its trade marks Storage King (Word Mark) and the following STORAGE KING LOGO (together Storage King Marks):
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The s60 ground of opposition was that because of the reputation in the Storage King Marks, acquired before the 29 February 2012 filing date of the King Arthurs Marks (Priority Date), the use of the King Arthurs Marks would be likely to deceive or cause confusion.
Storage King filed evidence of its reputation throughout Australia, which King Arthurs conceded was significant. This included evidence of use of the trade mark Storage King since 1999 and of (at the time) 113 Storage King storage outlets across Australia. One of these outlets was at Carrum Downs, Victoria where KAS established a storage business under the King Arthurs Marks in September, 2011, about 2 years after the opening of Storage Kings’ Carrum Downs store.
Storage King supplied evidence of confusion between its storage services and those of KAS and the delegate of the Registrar of Trade Marks (Delegate) was satisfied that they “carried significant weight in the assessment of the likelihood of deception or confusion” under s60. While the rights of the parties are required to be determined at the Priority Date and the instances of confusion occurred after that date, the Delegate confirmed that evidence of confusion “only a few months after the priority date” may still be relevant.
Storage Kings’ evidence also showed how the word KING stood out in its trade marks and how there were similarities between the respective parties’ trade marks in use, for example, as shown as in the following examples of KAS’ and Storage Kings’ use of their trade marks taken from their respective websites:
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While the Delegate accepted submissions on behalf of the Applicant that the words KING ARTHURS created a different impression to STORAGE KING, this was not enough to avoid the likelihood of deception or confusion having regard to Storage King’s reputation, the overlap in the parties’ respective services and the way in which KAS had used its trade marks, including the use of similar colours as illustrated above.
Accordingly, the Delegate refused to register either of the King Arthurs Marks.