Storage King Pty Ltd and Storage King Services Pty Ltd v King Arthurs Storage

[2014] ATMO 21

TRADE MARKS ACT 1995

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

Re:Opposition by Storage King Pty Ltd and Storage King Services Pty Ltd to registration of trade mark applications 1477386(39) and 1477388(39) - KING ARTHURS and KING ARTHURS STORAGE (logo) - filed in the name of King Arthurs Storage Pty Ltd.

Delegate:

Robert Wilson

Representation:

Opponents: Chris Burgess of Counsel instructed by Catherine Chant of Thompson Lawyers.

Applicant: Shaun Creighton (lawyer) instructed by Scott Buchanan of Run Legal (not present).

Decision:

2014 ATMO 21

Section 52 opposition: ss 42, 44, 60 and 62A pressed – s 60 only considered – use likely to cause deception or confusion – registration refused for both trade marks.

Costs awarded against Applicant.

Background

1. This is an opposition brought by Storage King Pty Ltd and Storage King Services Pty Ltd (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1955 (‘the Act’) to registration of the trade marks subject of the applications detailed below in the name of King Arthurs Storage Pty Ltd (‘the Applicant’):

Application Number:

1477386

Priority Date:

29 February 2012   (‘the Priority Date’)

Services:

Class 39: Storage; storage of goods; packing and storage of goods; advisory services relating to the storage of goods; arrangement for the storage of goods; consultancy services relating to storage; container storage; hire of warehouse storage space; information services relating to storage; storage information; storage services for goods; warehouse storage services; rental of storage containers; rental of storage facilities; rental of storage space; rental of storage units; logistics services (transport, packaging, and storage of goods)

(‘the Applicant’s Services’)

Trade Mark:

KING ARTHURS  (‘the King Arthurs Word Trade Mark’)

Application Number:

1477388

Priority Date:

29 February 2012   (‘the Priority Date’)

Services:

Class 39: Storage; storage of goods; packing and storage of goods; advisory services relating to the storage of goods; arrangement for the storage of goods; consultancy services relating to storage; container storage; hire of warehouse storage space; information services relating to storage; storage information; storage services for goods; warehouse storage services; rental of storage containers; rental of storage facilities; rental of storage space; rental of storage units; logistics services (transport, packaging, and storage of goods)

(‘the Applicant’s Services’)

Trade Mark:

(‘the King Arthurs Logo Mark’)

1. The acceptance of the applications was advertised in the Australian Official Journal of Trade Marks on 12 July 2012. The Opponent filed notices of opposition (‘the Notices’) on 17 July 2012. The Notices were similarly worded and raised a number of grounds of opposition corresponding to various section of the Act. At the hearing the Opponent indicated that it was pressing only grounds pursuant to ss 42, 44, 60 and 62A.

Evidence

1. The Opponent filed Evidence in Support of its opposition on 16 January 2013. This evidence consists of:

• Statutory Declaration made on 16 January 2013 by Michael Alafaci, the Chief Financial Officer of the Storage King group of companies which includes the Opponent, with annexures MA-1 to MA-48 (‘the Alafaci Declaration’); and

• Statutory Declaration made on 16 January 2013 by Ashley Edward Tasker, the Store Manager of the Storage King Cranbourne outlet, with annexure AT-1 (‘the Tasker Declaration’).

1. The Applicant filed Evidence in Answer on 28 June 2013. This evidence consists of:

• Statutory Declaration made on 27 June 2013 by Gary Robert Mepstead, a director and the company secretary of the Applicant, with attachments GM-01 to GM-12 (‘the Mepstead Declaration’); and

• Statutory Declaration made on 27 June 2013 by Rodney Edwin Jennion, the business manager of the King Arthurs Storage facility at Curram Downs (‘the Jennion Declaration’)

1. The Opponent filed Evidence in Reply on 27 September 2013. This evidence consists of:

• Statutory Declaration made on 27 September 2013 by Michael Alafaci, (‘the Second Alafaci Declaration’).

1. I heard the matter as a delegate of the Registrar of Trade Marks on 21 February 2014 in Canberra. Chris Burgess of Counsel, instructed by Catherine Chant of Thompson Lawyers appeared for the Opponent. Shaun Creighton, lawyer, was instructed by Scott Buchanan of Run Legal on behalf of the Applicant. Mr Buchanan was not present at the hearing. Mr Creighton was assisted at the hearing by Ms Kim Crow. Both parties’ oral submissions were supplemented by written submissions which were emailed to both me and the other party.

2. In his declaration, Mr Alafaci stated that the Opponent and its related entities ‘has an international business of providing storage services and goods, such as boxes, tape, padlocks, bubble wrap and plastic wrapping, among other services and goods’. The Storage King business includes some 113 outlets across Australia and some 22 outlets in New Zealand. The Australian outlets include one at Carrum Downs in Victoria. The Opponent has a number of registered trade marks including the following:

Trade Mark Number:

760785

Priority Date:

28 April 2008

Services:

Class 39: Storage

Trade Mark:

(‘the STORAGE KING Logo Mark’)

Trade Mark Number:

1178835

Priority Date:

28 May 2007

Goods & Services:

Class 16: Cardboard; articles of cardboard for packaging; cardboard boxes; cardboard storage boxes; cardboard storage containers; cardboard cartons; cardboard transport boxes; cardboard carrying cases; cases of cardboard for packaging; containers of cardboard for packaging; boxes for storage purposes; boxes for packaging; boxes for storage purposes; boxes made of cardboard; cardboard; storage cabinets; storage cupboards

Class 39: Storage; container storage; depository storage; packaging and storage of goods; storage services for goods; advisory services relating to the storage of goods; arranging of the storage of goods; consultancy services relating to storage; hire of storage sites; hire of warehouse storage space; information services relating to storage; logistics services (being the transport, packaging and storage of goods); rental of storage containers; rental of storage facilities; rental of storage space; rental of storage units; storage consultancy services; storage facilities consulting services

Trade Mark:

THE KING OF STORAGE

(‘the KING OF STORAGE Mark’)

Trade Mark Number:

1545919

Priority Date:

13 March 2013

Goods & Services:

Class 16: Cardboard; articles of cardboard for packaging; cardboard boxes; cardboard storage boxes; cardboard storage containers; cardboard cartons; cardboard transport boxes; cardboard carrying cases; cases of cardboard for packaging; containers of cardboard for packaging; boxes for storage purposes; boxes for packaging; boxes for storage purposes; boxes made of cardboard; cardboard; storage cabinets; storage cupboards

Class 35: Business administration and management services, namely, providing assistance to businesses and individuals in the form of providing business services ancillary to the provision of self-storage facilities, namely, providing business information for use by storage customers and providing photocopying services for storage customers

Class 39: Storage; container storage; depository storage; packaging and storage of goods; storage services for goods; advisory services relating to the storage of goods; arranging of the storage of goods; consultancy services relating to storage; hire of storage sites; hire of warehouse storage space; information services relating to storage; logistics services (being the transport, packaging and storage of goods); rental of storage containers; rental of storage facilities; rental of storage space; rental of storage units; storage consultancy services; storage facilities consulting services

Trade Mark:

STORAGE KING

(‘the STORAGE KING Word Mark’)

1. Mr Alafaci has declared that the trade mark ‘Storage King’ has been used throughout Australia by the Opponent since 1999 in respect of the goods and services it provides. The principal storage services provided by the Opponent typically involve the short or long term rental of storage space to customers for the purposes of storing items such as household goods and chattels, cars and boats. Some of the storage space provided is completely enclosed in locked storage spaces. Other storage space provided is either under cover or simply outdoors, such as might be suitable for storing vehicles or boats or caravans.

2. The Applicant provides storage services which are similar to those provided by the Opponent. The Applicant provides these services principally from an outlet at Carrum Downs in Victoria. Mr Mepstead has declared that:

   [T]he Applicant’s self-storage business was launched in September 2011.

   [The Applicant] provides under-cover storage for boats and caravans. We also provide open-air self-storage of motor vehicles. Our business at [Carrum Downs] is what is described as an open-air self-storage facility providing vehicle-to-storage access, such access which is also provided with electronic keys enabling our client to access their stored property between the hours of 7.00am and 8.00pm regardless of whether our personnel are on-site.

Grounds of Opposition, Onus and Standard of Proof

1. Counsel for the Opponent confirmed at the Hearing that it was only pressing grounds pursuant to ss 42, 44, 60, and 62A. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground it considered relevant in proceedings before the Court. In respect of each opposition, the Opponent bears the onus of establishing at least one of the four grounds pressed. As will become apparent it is necessary only that I consider the ground pursuant to s 60 in respect of both opposed trade marks.

2. The relevant standard of proof required is the ordinary civil standard based on the balance of probabilities.[1] The date at which the rights of the parties are to be determined is 29 February 2012: this being the filing date of the applications.[2]

Discussion

[1] Pfizer Products Inc v Karam (2006) 70 IPR 599 [6]-[26].

[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

Section 60

1. The ground based on s 60 of the Act is indicated in the Notice as follows:

   Another trade mark had, before the priority date of the registration of the Trade Mark, in respect of the services of the Application, acquired a reputation in Australia and because of the reputation of that other trade mark, the use of the Trade Mark would be likely to deceive or cause confusion.

2. Section 60 of the Act itself is reproduced below:

   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.

3. The Opponent confirmed at the hearing that it was relying only on its use of the STORAGE KING Logo Mark and the STORAGE KING Word Mark (‘the Section 60 Marks’) to underpin its s 60 ground.[3] During the evidence stages of the oppositions the Opponent provided comprehensive evidence of use of these trade marks in connection with its goods and services. It was conceded by the Applicant both in its submissions and at the hearing that these trade marks have acquired a significant reputation for the purposes of s 60. It was also agreed by the parties at the hearing that the services provided by the Applicant and the Opponent are similar. Having perused the evidence I agree with both of these views.

   [3] I note that although these correspond to registered trade marks, it is not necessary for the purposes of s 60 that the trade mark(s) relied upon be registered.

4. It is not sufficient that the Opponent merely establishes that its trade mark has a significant reputation, I must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Whilst s 60 no longer requires that the trade mark applied for be substantially identical or deceptively similar to that identified by the Opponent, discussions and decisions on those subjects are legion and a good number provide relevant comments in relation to a consideration of the questions of deception or confusion. In Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[4]

   [4] (1937) 58 CLR 641, 658.

5. The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case. ^[5]

   [5] [1979] RPC 410, 423 (citations omitted).

6. It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:

   A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[6]

   [6] (1997) 38 IPR 495, 501(citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act. The decision itself was overturned on appeal to the Full Federal Court (Wilcox, Tamberlin and Merkel JJ) (1998) 45 IPR 393, but not on this point.

7. In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

   A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[7]

   [7] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

8. The Opponent has averred in its submissions that, ‘[i]n this case, there is a real likelihood of confusion, for at least the following reasons …’. The Opponent went on to discuss a number of reasons which were elaborated upon by Mr Burgess at the hearing. I will list these reasons below:

   i.The memorable impression of the STORAGE KING Word Mark and the STORAGE KING Logo Mark is the idea that the trade origin is a King bringing with that its connotations of royalty, supremacy, superiority and authority.

   ii.The word KING is particularly distinctive and memorable in both of the Section 60 Marks because:

   a.    The word STORAGE is descriptive of the goods or services;

   b.    Kings are not a type of storage. Nor do Kings provided storage. The idea that there is a King who provides storage, or a King of storage, is fanciful;

   c.    In the STORAGE KING Logo Mark, the word KING appears in lager text to the word STORAGE, making it more noticeable and visually prominent; and

   d.    The stylised crown in the STORAGE KING Logo Mark reinforces the effect and impression of the word KING by depicting the traditional head gear worn by KINGS.

   e. The evidence shows that the Section 60 Marks have been used in conjunction with slogans that place additional emphasis on the word KING, e.g. ‘We store with the King’ and ‘Learn like a King, Live Like a King’. Use of such slogans reinforce the likelihood that persons who have seen the Section 60 Marks remember the word KING.

   iii.The memorable impression of the opposed trade marks is the same idea: i.e. that trade origin is a King with the some connotations described above. This gives rise to a likelihood of confusion, given the similarities between the marks under consideration and the opponent’s reputation in the Section 60 Marks.

   iv.This is not a case where the similarity between the conflicting trade marks is limited to the existence of a common idea. The four marks under consideration all incorporate the word KING, this being the essential feature of all the marks.

   v.The differences between the marks under consideration do not avoid the likelihood of confusion:

   a.    King Arthur is famous and known in the mind of the public because he was the King. When used with KING, the word ARTHURS thus reinforces the idea of a KING and its connotations of royalty, etc.

   b. The word KING in the Section 60 Marks does not connote any particular King, but brings to mind the connotations of royalty, etc that are associated with all Kings, including King Arthur.

   c.    It is likely members of the public may reasonably wonder whether KING ARTHURS is a division, or sub-brand of, the STORAGE KING business.

   d.    The word ARTHURS is presented in substantially smaller text than the word KING in the KING ARTHURS Logo Mark. This causes the word KING to be visually more noticeable, and have a stronger effect on the eye and mind, than the word ARTHURS.

   e.    The ‘seal’ device in the KING ARTHURS Logo Mark reinforces the word KING, because it is well known that seals were historically used by Kings and royalty.

   vi.In so far as the KING ARTHURS Logo Mark includes the word STORAGE in combination with KING, this increases further the likelihood of confusion in respect of that mark.

   vii.The risk of confusion must be considered against the background of the full notional use that can be made of the opposed marks. The similarity of the services provided by the Applicant and Opponent increases the likelihood of confusion.

   viii.There is direct evidence of actual confusion, which have involved customers or prospective customers, who have mistakenly thought the applicant’s KING ARTHURS STORAGE facility at Carrum Downs, Victoria, is the Opponent’s STORAGE KING facility in that local area.

1. The Applicant responded to the Opponent by submitting that there are sufficient differences between the opposed trade marks and the Section 60 Trade Marks, such that deception or confusion is not likely to arise. The Applicant referred in its submissions to the decision in Roger Seller & Myhill Pty Ltd v Reece Pty Ltd  where Hearing Officer Lyons stated:

   Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[8]

   [8] [2010] ATMO 5, [30].

2. The Applicant focused both its written and oral submissions on how the word KING in the relevant trade marks would be interpreted, and on the differences between the logos. The Applicant averred that:

   The reputation of the Opponent resides in the precise words ‘Storage King’ and the precise [STORAGE KING Logo Mark]’.

   In none of the Opponent’s extensive evidence of advertising expenditure, products or logos has there been any deviation from these precise words or logo. The idea of the brand, evidenced in [the KING OF STORAGE Mark] … is that the Opponent is the best at storage. It is an entirely laudatory use of ‘king’ and an entirely descriptive use of ‘storage’.[9]

   The overlap of the word ‘king’ and the descriptor ‘storage’ does not make the ‘Storage King’ brand deceptively similar, or similar, to the [KING ARTHURS Logo Mark]. The logo utilises distinctive artwork of a regal seal completely unlike the Opponent’s crown logo. Furthermore, ‘King Arthurs’ uses the word King in a different context – to describe an actual king – and to elicit a historical figure famous in folklore. When you think of ‘King Arthurs’ you think of medieval history, you think of the strong leader who protected Britain from Saxon invasion, you think of Merlin, Lancelot and the Holy Grail. Perhaps you even think of Monty Python. King Arthur is the stuff of tales, of legend, a story that has endured thousands of years. Like King Henry VIII, King Kong and Elvis, he is far from a generic ‘king’

   In comparison, Storage King is no such King. The use of the word ‘king’ is purely in the sense one would use the word ‘Master’ or ‘Guru’ or ‘Specialist’. The Mark is entirely descriptive, saying, ‘we do storage and we are good at it’. The crown logo merely plays on the idea of ‘king’, much like ‘Donut King’ use a little crown in its logo. The crown has no similarity in look or impression to the giant circular seal. The name ‘storage king’ elicits no particular story, no particular folklore, It is descriptive and laudatory in the purest sense.

   [9] I note here that the Opponent is not relying on the KING OF STORAGE Mark for the purposes of s 60.

3. In Australian Woollen Mills Ltd v FS Walton & Co Ltd, Dixon and McTiernan JJ stated that ‘evidence of actual cases of deception, if forthcoming, is of great weight’.[10] The Opponent has provided evidence of actual cases of deception. Mr Tasker has declared:

   I am aware of numerous instances of confusion between the Applicant’s storage facility and services and the Opponent’s storage facilities and services and since about June 2012, I have recorded details of the incidents of confusion.

Mr Tasker went on to list some eight examples where confusion had occurred. Mr Tasker also declared that ‘the instances of confusion I have referred to in this declaration are just some, not all, of the examples of confusion that have arisen’.

[10] (1937) 58 CLR 641, 658.

1. The Applicant submitted in respect of the examples that:

   [T]he evidence merely suggests that various consumers were confused as to the location of Storage King Carrum Downs, or at most, assumed that there was only one storage business in Carrum Downs.

   While it may be ‘confusing’ to have two distinct and competing storage businesses in close proximity, the Applicant is not in contravention of any law purely by being a rival trader. An analogous ‘confusion’ could be the bike shops ‘Ride Shop’ and ‘Lonsdale Cycles’ located in close proximity in the Canberra suburb of Braddon. Consumers make the mistake that there is only one bike shop in that location, and despite intending to go to one shop, actually go to the other. This doesn’t prove confusion between the shops’ trade marks, but rather, that some consumers are looking merely for a storage unit in Carrum Downs or a bike [shop] in Braddon, and do not inquire further as to specific ownership.

2. While the Applicant’s explanation might explain some of the instances of confusion there are others which cannot be explained by the type of confusion described by the Applicant. Some such examples from the Tasker declaration are:

   On 30 June 2012, a person … attended Storage King Carrum Downs and in the course of a conversation with a colleague of mine informed her that he had sent an email to King Arthurs Storage seeking a quote, thinking that he was actually emailing Storage King Carrum Downs.

   On 13 September 2012, a man by the name of ‘Frank’ called Storage King Carrum Downs in order to pay a bill, however, his details could not be located on the Storage King computer system. I asked Frank where his goods were stored and Frank referred to the address of King Arthurs Carrum Downs on Hall Road.

3. I note that all the examples of actual confusion provided by the Opponent occurred after the priority date. The Applicant has not objected to this evidence on this basis, but for completeness I note that while it is necessary that the rights of the parties is to be determined as at the priority date, evidence which is dated after the priority may still have a bearing on this determination. [11] The examples of actual confusion are from only a few months after the priority date. I am satisfied that the examples of actual confusion carry significant weight in the assessment of the likelihood of deception or confusion for the purposes of s 60.

   [11] Conde Nast Publications Ltd v Taylor (1998) 41 IPR 505, 509 (Burchett J).

4. In its evidence the Opponent has provided examples of the Applicant’s trade marks in use. These examples demonstrate that the word ‘king’ which is common to all the trade marks under consideration, stands out and is a significant and memorable element of the both the opposed trade marks and the Section 60 Trade Marks. I accept the Applicant’s submissions that the words KING ARTHURS in combination create a different impression from STORAGE KING but I am not satisfied that this difference is sufficient to avoid the likelihood of deception or confusion that arises from the very significant reputation that the Opponent has in the Section 60 Marks. This is especially so when the opposed trade marks are used in the manner demonstrated in the Opponent’s evidence.

5. The trade marks applied for by the Applicant are not restricted to any particular colour. The evidence shows that the Applicant is consistently using particular colours in connection with its trade marks – being a particular dark shade of purple and yellow. The Opponent consistently uses a dark shade of blue and yellow in its get-up. The colours used by the Applicant, while not identical to those used by the Opponent, are somewhat similar. The use of these similar colours adds to the likelihood of confusion.

6. The examples of actual confusion provided by the Opponent serve to further support a view that deception or confusion was likely up to and as at the priority date. That the Applicant and Opponent are providing very similar services also adds to the likelihood of confusion.

7. I am satisfied that the Section 60 Marks had, before the priority date of the opposed trade marks, acquired a reputation in Australia and because of that reputation, the use of the opposed trade marks would be likely to deceive or cause confusion.

Decision

1. Section 55(1) of the Act relevantly provides that, 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.

2. I have found that the Opponent has established the ground of opposition it raised pursuant to s 60 of the Act in respect of each of the opposed trade marks. Accordingly, I refuse to register the opposed trade marks.

Costs

1. Both parties requested an award of costs in their favour. As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant as per Schedule 8 of the Trade Mark Regulations 1995.

Robert Wilson

Hearing Officer

Trade Marks Hearings

3 March 2014