The Special K: Kellogg v. Thanasi Kokkinakis

Australian tennis player Thanasi Kokkinakis is facing a trade mark dispute against leading breakfast cereal manufacturer the Kellogg Company (Kellogg’s).

Kokkinakis has registered his name ‘Special K’, for use in relation to sports clothing, racquets, and sporting events in lasses 25 (clothing), 28 (sporting goods) and 41(sports services). Kellogg’s holds a several Australian registered trade mark Special K for breakfast foods in class 30 and is opposing Kokkinaki’s application.

The goods and services of both the parties were not similar or even closely related and thus, Kellogg relied on Section 60 claiming that it holds a reputation in the trade mark Special K and as a result of that reputation. Kokkinaki’s use of the mark will lead to confusion.

The hearing took place in J7une 2017 before the Federal Court. On the argument of the reputation, the hearing officer agreed that Kellogg certainly holds a reputation in the mark Special K through its 50 years of use but that is only limited to goods on which the mark has been used i.e. breakfast cereals.

In its evidence, Kellogg included Special K on its breakfast cereals in connection with various sporting activities which would prove that its reputation spreads beyond breakfast cereals and into the same area as Kokkinaki’s application. However, the hearing officer was did not find merit in this argument and noted that a consumer upon seeing the mark of Kokkinaki’s would neither think of Kellogg or think of Kellogg and immediately dismiss the possibility of kellogg’s involvement due to the difference between Kokkinaki’s goods and services and Kellogg’s goods.

Thus, the hearing officer stated that there was no likelihood of confusion between the mark and Kokkinaki’s application was to proceed to registration. However, it appears that this decision is now subject of an appeal.