Order on the court12 September 2017
Australian tennis pro Thanasi Kokkinakis found himself being taken to an unfamiliar type of court recently, when cereal giant Kellogg's opposed his registration of a "Special K" trade mark.
Why try to trade mark an existing global brand name, you ask? Kokkinakis and fellow Australian tennis pro Nick Kyrgios were affectionately dubbed "the Special K's" after a dynamic display of tennis finesse in a doubles match in 2015. Now Kokkinakis is looking to capitalise on the moniker, with a Special K trade mark application being filed for use relating to sportswear (Class 25), tennis racquets (Class 28) and sports competitions (Class 42).
Following advertisement of the application's acceptance for possible registration, Kellogg's (as the registered owner of the Special K trade mark for breakfast foods) opposed the registration on the grounds that it is identical to their existing trade mark and its use would contradict s 42(b) of the Trade Marks Act 1995 (Cth), it would likely deceive or cause confusion (s 60 of the Act), and that Kokkinakis is not the owner of the trade mark (s 58 of the Act).
Kellogg's particularised the grounds of their opposition alleging that, given the significant reputation of the Special K brand, Australian consumers would be easily confused or misled into believing that any goods produced by Kokkinakis were associated with Kellogg's.
The Registrar's delegate delivered his decision in April of this year. Although the Special K trade marks in question were identical, the delegate found that Kellogg's failed to establish sufficient evidence for any of the opposition grounds. The delegate found that Kellogg's reputation was limited to breakfast cereals (the same class as its trade mark), and that any sporting merchandise offered by Kellogg's with the Special K logo was "merely incidental" to the promotion and sale of its breakfast cereals. The delegate also held that the strong dissimilarity between the goods produced by Kellogg's and the goods to be produced by Kokkinakis meant there would be no tangible risk of confusion for consumers, with each party's goods being sold in entirely different retail environments.
Consequently, Kellogg's opposition to the trade mark application failed.
Kellogg's has since appealed the Trade Marks Office's decision to the Federal Court and, with the case set to return on 31 August, we can't wait to see what each party serves up.
You can read the Trade Mark Office's decision of Kellogg's Company v TJ Kokkinakis Pty Ltd  ATMO 58 in full here.