Game – Set – Match: the trade mark battle between Australian tennis champion, Thanasi Kokkinakis and ‘Special K’
It has been all over the news. The trade mark battle between Thanasi Kokkinakis and Kelloggs Company (the owner of the ‘Special K’ trade mark) has not only provided light entertainment for the Australian media, it has opened up discussion on the importance of trade mark protection.
Back in 2015, the Australian tennis champion attempted to re-brand himself as ‘Special K’
However, when Kokkinakis applied to register a trade mark over the name, his application was vehemently opposed by Kelloggs. Kelloggs argued that Kokkinakis’ application constituted trade mark infringement and on that basis, should be denied (no matter how “special” the tennis star claims to be!).
This case has offered a timely reminder about the value and importance of trade marks. It also provides an apt example of how trade mark legislation applies, and what can happen if an existing trade mark is infringed.
The ‘Special K’ Case
Kelloggs first registered a trade mark over the words ‘Special K’ in August 1958 for ‘breakfast foods and other cereal foods’, ‘cereal bars’ and the like.
Almost 60 years later, TJ Kokkinakis Pty Ltd lodged its application to register a trade mark over the words ‘Special K’ in the classes for sporting clothing (class 25), sporting apparatuses (class 28) and sporting competitions (class 41).
Briefly, Kelloggs argued that Kokkinakis’ trade mark was too similar to its registered trade mark, and that given the significance of the ‘Special K’ cereal reputation, the use of the words ‘Special K’ in combination with Kokkinakis’ career was likely to cause confusion or deceive the public. Kelloggs argued this point by providing evidence that it has promoted its Special K brand coupled with sport, health and fitness related promotional campaigns in the past.
Ultimately, the Australian Trade Marks Office rejected Kelloggs’ opposition to the trade mark application and held that even though Special K has a significant reputation throughout Australia, it failed to prove that Kokkinakis’ use of the words ‘Special K‘ would deceive and cause confusion amongst the public.
Kelloggs has since applied to appeal the decision in the Federal Court. Following the recent directions hearing, the case has now been sent to a mediation conference and is set to return to the Federal Court on 31 August this year.
Trade mark infringement generally
Although Kokkinakis was not found to have infringed Kelloggs’ trade mark, it is useful to understand what constitutes trade mark infringement, and how you can avoid it.
Generally, trade mark infringement occurs when a person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, a registered trade mark for goods or services that are closely related or of the same description. Occasionally, a ’well known‘ registered trade mark may be infringed by the use of a similar mark on dissimilar goods or services.
Another recent case involving Qantas and its battle to protect its iconic kangaroo image also highlights the importance of not only registering trade marks, but ensuring they cover all of your goods and services.
In that case, Qantas was unsuccessful in its application to prevent another company from using a similar kangaroo image on its designer clothing. Qantas’ trade mark was not registered for clothing and was therefore not protected. While ultimately, the court held that the mark on the clothing was not similar enough to that of Qantas, life would have been much easier for Qantas if it had better trade mark protection.
Qantas has since submitted further trade mark applications to broaden its protection of its marks to clothing and other goods and services.
Other ways to prevent trade mark infringement
The penalties for trade mark infringement can be quite severe. Particularly where a brand may be a company’s most valuable asset, re-branding as a result of trade mark infringement can be very expensive and risk losing significant goodwill.
As a preliminary step, before you start using a new brand, a trade mark search should always be conducted to ensure your trade mark is not too similar to earlier trade marks. Searches of other databases, such as business and company names, are also prudent.
For example, early last year, Nestle won its battle against a small business owner for “accidentally” infringing its ‘Musahi’ trade mark. The small business owner started an online vitamin business known as ‘A-Sashi’ with a registered business name, domain name, and used a logo incorporating the name. Nestle argued the names were deceptively similar. The Federal Court ordered the cancellation of A-Sashi’s business name and domain name.
If the small business owner had conducted a preliminary trade mark search, the outcome in this case could have been much different.
Trade mark registration
Once all initial searches have been conducted, the next step is to register your trade mark.
Registering your trade mark is the only way to secure proprietary rights to a name or logo. A business name is not a trade mark. There are various strategies and approaches to consider when registering and securing a trade mark.
For example, it is important your proposed trade mark is distinctive rather than descriptive. If a trade mark is not distinctive, it is more difficult to obtain registration and stop other businesses from using a similar mark. Whether a trade mark is descriptive may also depend on the nature of the goods and services in question. For instance, the word ’apple‘ describes apples or apple trees but not digital products.
Similarly, a trade mark cannot create a monopoly right over a word or phrase that other traders may wish to genuinely use in the ordinary course of their business. For example, in 2015, Chemist Warehouse alleged that Direct Chemist Outlet infringed its registered trade mark over the phrase, “Is this Australia’s Cheapest Chemist?”. The Federal Court found the trade mark slogan was not valid because it was merely descriptive and did not meet the distinctiveness requirements.
Properly and accurately registering a trade mark is vital in preventing incidents of trade mark infringement and protecting your business’ names and brands.
That said, you must at the outset, look before you leap! (i.e. conduct availability and clearance searches).
Please feel free to contact us if you would like to further discuss your intellectual property rights and responsibilities with us.
This article was written by Malcolm McBratney, Principal and Teneille Meyer, Graduate Lawyer.