Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.

Monday, July 10, 2017

Breakfast of (tennis) Champions: Kellogg versus Kokkinakis

By Kim Evans, Senior Associate, and Isabel Burraston, Law Graduate

Australian tennis player, Thanasi Kokkinakis, has found himself in a battle on a different kind of court in a trade mark dispute against cereal giant, Kellogg. In an appeal made to the Federal Court in May 2017, Kellogg is challenging Kokkinakis' application to register the trade mark 'Special K'.

Registering a nickname: a Special K[ase]? 

Kokkinakis, 21, earned the nickname 'Special K' along with Nick Kyrgios, 22, whose dynamic doubles matches led the Australian public and media to affectionately dub the duo 'the Special Ks'. Kokkinakis has since sought to monetise the 'Special K' moniker.

The tennis world itself is no stranger to celebrity brands. Rafael Nadal and Roger Federer have each registered unique logos as trade marks that they apply to a range of commercial products, and it's clear that the celebrity nickname is becoming an increasingly important asset in a celebrity's intellectual property arsenal. For example, Beyoncé and Jay-Z reportedly filed trade mark applications in the US to cover the names of their newly born twins, Rumi and Sir, on the same day that Beyoncé returned home after giving birth.

Capitalising on this very culture, Kokkinakis, via the TJ Kokkinakis Pty Ltd company owned by his father, filed an application at the Trade Marks Office to register the 'Special K' trade mark for use in relation to sports apparel, racquets, competitions and events.

Kellogg's challenge 

Not one to back down at crunch time, Kellogg, the registered owner of the 'Special K' trade mark in relation to breakfast cereals, opposed the registration. It's opposition relied on number of grounds, including that Kokkinakis' 'Special K' was so similar to Kellogg's 'Special K' trade mark that had acquired a reputation in Australia that it was likely to deceive or cause confusion (s60), that its use was contrary to law (s42(b)), and that Kokkinakis was not the owner of the trade mark (s58).

The Umpire Trade Marks Office decision

The Registrar's delegate, Nicholas Smith, delivered his decision in April 2017. Despite the fact that Kokkinakis' 'Special K' is identical in words to Kellogg's 'Special K' trade mark, the delegate found that Kellogg failed to establish any of its grounds of opposition.

Kellogg asserted that, by consequence of the substantial reputation the company had established in its 'Special K' trade mark, consumers were likely to be confused or misled into believing that Kokkinakis' goods were in some way associated with Kellogg. The delegate, however, disagreed.

While there is no requirement in the Trade Marks Act for the reputation of the nominated trade mark to be in respect of similar goods or closely related services, the delegate considered the similarity of Kellogg's goods against Kokkinakis' and concluded that they were entirely different. Kellogg's reputation was limited to breakfast cereals, not sports related products and services, and while the company had made some effort to focus promotion of their goods in the fields of sport, health, fitness and wellbeing (remember that red mini-skirt and jeans challenge?), Kellogg has never supplied non-foodstuffs, and if it has, the supply was merely incidental to the use of the 'Special K' trade mark in relation to food  – it was not a part of a separate or distinct business.

It followed that Kellogg failed to establish the other grounds of opposition: Kokkinakis' use of the 'Special K' trade mark in relation to sport clothing, equipment or competitions was not contrary to law as consumers would not be misled or confused. Further, to the extent that the goods and services provided by Kellogg and Kokkinakis were not the 'same kind of thing', Kokkinakis was the owner of the mark as applied to sports-related products.

The rally continues…

The American cereal manufacture has since appealed the Trade Marks Office's decision to the Federal Court and, in a directions hearing at the end of June 2017, Justice Brigitte Markovic referred the case to mediation, set to take place in August 2017.

While for now Kokkinakis is up one set, whether he will win the match point remains to be seen when the parties return to the Federal Court on 31 August 2017.

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