Challenge! A trade marks match

Rising tennis star Thanasi Kokkinakis has found himself off the tennis court and in the Federal Court, after international cereal giant, the Kelloggs Company (“Kelloggs”), served TJ Kokkinakis Pty Ltd (“Kokkinakis”) with legal proceedings in attempt to stop Kokkinakis from using his nickname ‘SPECIAL K’ commercially as a trade mark.

A Trade Marks Warm-Up

“A trade mark distinguishes a business’ goods or services from those of other traders.”

In Australia, trade marks are registered using a class-based classification system which is divided between goods and services. A trade mark is registered in respect of particular goods and services and gives the owner exclusive right to use that trade mark in relation to those goods and services. IP Australia, the trade marks office, will not register a proposed trade mark if it is ‘substantially identical’ or ‘deceptively similar’ to an existing trade mark registered by another business or trader in relation to the same or similar goods and/or services.

In this case, Kokkinakis sought to trade mark ‘SPECIAL K’ in relation to sportswear, tennis apparatus and sports competitions which are goods and services covered in classes 25, 28 and 41. Meanwhile, Kelloggs’ existing ‘SPECIAL K’ trade marks are registered in relation to breakfast foods and other cereal foods which are goods in class 30.

Kelloggs vs. Kokkinakis

The key issue here is that although the marks are identical, registration of Kokkinakis’ mark is not necessarily prohibited under the Trade Marks Act 1995 (Cth) (“the Act”) because the goods and services covered are not the same, and would not typically be considered similar, as those protected under the Kelloggs registration.

As such, Kelloggs opposed Kokkiankis’ registration under the Act on other grounds, including that because Kelloggs’ ‘SPECIAL K’ trade mark was so well known and had acquired a reputation in Australia, the use of an identical mark by Kokkinakis was likely to deceive or cause confusion.

Ultimately, the Trade Marks Office found that the goods and services covered by Kokkinakis’ application were entirely different to those under the Kelloggs registered trade marks. Furthermore, Kelloggs had only developed a reputation in relation to breakfast foods and cereals, not sports related goods or services, and therefore Kokkinakis’ use of the trade mark in relation to sportswear, tennis apparatus or sports competitions was not contrary to law, as consumers would not be misled or confused.

The Kelloggs opposition was quashed, however, Kelloggs did not go down without a fight. The decision was appealed to the Federal Court which has since deferred the matter for mediation later this month.

The Upshot

This match-up demonstrates a couple of key lessons for trade mark applicants: firstly, the legal risks of taking on brands with well-known assets and secondly, the importance of carefully considering the goods and services that are applicable to your business and therefore should be protected under your potential trade mark. There are also a range of other “offensive” and “defensive” trade mark strategies available to trade mark owners to protect their brand and assets. Want to know more? Contact us here.

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