IP SERVICE INTERNATIONAL successfully defends “Rubbish Removal Kings” trade mark opposition brought by Storage King before IP Australia

IP SERVICE INTERNATIONAL acted for Rubbish Removal Kings Pty Ltd in defending two trade mark oppositions brought by Storage King Pty Limited before IP Australia.

‍Background

The oppositions concerned Australian trade mark applications 2432221 and 2432374 for "Rubbish Removal Kings", both directed to rubbish and waste removal services in Class 39.

The Opponent relied on grounds including deceptive similarity concerning the earlier trade marks for STORAGE KING, MOVING KING and composite crown logo trade marks as well as reputation-based confusion and lack of distinctiveness, alleging that the Applicant’s trade marks were not registrable under sections 41, 44, and 60 of the Trade Marks Act 1995 (Cth).

The Delegate found that none of the grounds were established and directed that both applications may proceed to registration.

‍Our Strategy

We defended the applications by focusing on the commercial and legal differences between storage services and rubbish removal services, the descriptive and laudatory nature of "king" and "kings", and the broader marketplace use of similar crown and "king" and "kings" branding.

We also relied on evidence showing the Applicant’s adoption and use of the Rubbish Removal Kings branding since 2018, together with the absence of confusion between the relevant traders in the marketplace.

Outcome

Our Trade Marks Attorney, Quentin Dequiret, successfully represented our Client at the hearing, leading IP Australia to reject each of the grounds of opposition pressed by the Opponent.

The Registrar found that the Applicant’s marks were not deceptively similar to the Opponent’s marks, that the Opponent had not established a relevant reputation extending to rubbish or waste removal services, and that the Applicant’s marks were capable of distinguishing the Applicant’s services.

The Registrar directed that both Rubbish Removal Kings trade mark applications may proceed to registration, subject to a possible appeal in court.

Key Takeaways

The decision is a useful reminder that a strong reputation in one commercial field does not automatically prevent registration of a later mark in a different commercial field. The Registrar will carefully assess the specific marks, the relevant goods/ services, the evidence of marketplace use, and whether there is a real and tangible risk of consumer confusion.

The decision also confirms that common laudatory terms such as "king", "kings" and crown devices may have a narrow scope of protection where other traders use similar branding.

The decision protects our client’s path to registration for both its word and logo marks in relation to waste removal services, and preserve the commercial value built in its brand since 2018.

For trade mark owners facing a trade mark opposition, the case highlights the value of preparing clear evidence, carefully comparing the relevant goods/ services, and responding in a focused way to each opposition ground. Being properly advised can reduce the commercial pressure created by larger, established brands.

Read the full decision here.

Contact our expert Intellectual Property Lawyers at IP SERVICE INTERNATIONAL.

All content is provided for general information only and does not constitute commercial or legal advice.