Kokkinakis versus Kellogg: Serving Up a Trade Mark Dispute

Tim Fitzgerald

By Dr Tim Fitzgerald

Australian tennis star Thanasi Kokkinakis has found himself matched up against leading breakfast cereal manufacturer the Kellogg Company (Kellogg’s) in a trade mark dispute.

On 15 June 2017, a Federal Court hearing was held regarding trade mark registration for Kokkinakis’ nickname ‘Special K’ (the Kokkinakis application), for use in relation to sports clothing, racquets, and sporting events. Kellogg’s, who holds registered trade marks for Special K for breakfast foods, is opposing the Kokkinakis application.

In addition to piquing the interest of tennis (and perhaps cereal) fans, this dispute draws attention to some important aspects of trade mark registration in Australia, which are discussed briefly below.

Class-based Registration

Fraser Smith

Contact Fraser for more information about trade mark protection in Australia.

As a first point, and as is the case generally throughout the world, registration of trade marks in Australia uses a class-based system.[1] That is, specific classes of goods and/or services for which the applicant uses (or realistically intends to use) the trade mark must be specified in a trade mark application. Additionally, a trade mark will typically not be registered in Australia where it is ‘substantially identical’ or ‘deceptively similar’ to an existing trade mark that is registered by another person for the same or similar goods or services.[2]

In this case, although the Kokkinakis application is for the identical word (Special K) as registered by Kellogg’s, the classes elected (sports clothing and equipment, and sporting events) would not usually be considered similar to breakfast foods as designated in the Kellogg’s registrations. As such, the Kellogg’s registrations would not necessarily preclude registration of the Kokkinakis application in Australia. Nevertheless, there are other grounds that Kellogg’s may rely upon in opposing the Kokkinakis application that could potentially result in the application being refused.

Possible Grounds of Opposition

One ground that Kellogg’s may explore relates to the first use of the Special K trade mark. Specifically, if Kellogg’s can demonstrate that it has used Special K as a trade mark for goods or services specified in the Kokkinakis application before the filing date of this application, this could prevent registration.[3] However, it is not clear whether Kellogg’s has, in fact, previously used Special K as a trade mark in relation to sports clothing, equipment or sporting events. In this respect, it is relevant to note that the application of a trade mark to ‘ancillary’ products (e.g. various promotional and advertising materials) is not usually considered trade mark use in relation to those products.[4] It follows that, even if Kellogg’s had previously applied the Special K mark to (for example) a sports shirt, this may not be considered use of the mark as a trade mark for the shirt, if this use was considered to be for the purposes of advertising the cereal rather than trading in the shirt itself.

Another ground of opposition that Kellogg’s could potentially rely on relates to confusion or deception that may be caused by the Kokkinakis application because of Kellogg’s reputation in the Special K mark.[5] To make out this ground of opposition, Kellogg’s would be required to demonstrate that it had developed a reputation in the Special K trade mark in Australia, and that because of this reputation use according to the Kokkinakis application would be likely to deceive or cause confusion for consumers. Whether this approach could be successful would, of course, be dependent on the particular facts of the case presented. However it is notable that both the degree of reputation that can be established, and the degree of similarity of the goods or services to which this reputation relates as compared to those designated in the application, are important considerations for this ground of opposition.

Well-known Marks

In addition to the above, it is relevant to note that there are provisions under Australian law that relate to trade marks that are particularly well-known or famous. For example, if it can be established that a mark is sufficiently well-known that the use of the mark for goods and/or services that are not closely related to those designated in the trade mark registration would nevertheless indicate to a consumer that these goods and service were those of the trade mark owner, this use may represent an infringement of the registered mark. In this instance, for example, if Kellogg’s could convince a court that the use of Special K by Kokkinakis’ team on sports clothes would suggest to a consumer that the clothes were manufactured by, derived from, or endorsed by Kellogg’s, then Kokkinakis’ team may be held to be infringing Kellogg’s registration.

It is also notable that where it can be established that a trade mark is sufficiently well known in Australia, the mark can potentially be ‘defensively’ registered for classes other than those used or intended to be used by the applicant. Although there is limited precedent related to registration of defensive marks, the marks ‘AT&T’[6] and ‘VIAGRA’[7] have been considered suitably famous to allow defensive registrations in a range of classifications unrelated to those for which the applicants use the respective marks. Nevertheless, at least at the time of writing, Kellogg’s has not applied for defensive registration of Special K in other classes.

Conclusions

After Thanasi’s breakthrough year in 2015 followed by his absence from the tour in 2016 and early 2017 due to injury, tennis tragics, including the writer, will be following Thanasi’s performance closely now that he is back on the tennis court.

The Kokkinakis team’s contest against Kellogg’s in the trade mark arena will also be interesting to watch, and highlights a number of important provisions of Australian trade mark law.

For more information about IP protection contact us on +61 (0)7 3011 2200 or mail@fak.com.au. You can also follow all of our IP updates at www.linkedin.com/company/fisher-adams-kelly.

[1] See, IP Australia, Trade Marks Classification Search 2013 http://xeno.ipaustralia.gov.au/tmgns/facelets/tmgoods.xhtml for trade mark classifications in Australia.

[2] Trade Marks Act 1995 (Cth) s 44.

[3] Ibid s 58.

[4] See, e.g., Karu Pty Ltd v Jose (1994) 53 FCR 15.

[5] Trade Marks Act 1995 (Cth) s 60.

[6] Re AT & T Corp’s Application [2001] ATMO 96.

[7] Re Pfizer Products Inc (2004) 61 IPR 165.