It’s safe to say that, in the world of trade marks, there’s no love lost between Australian tennis player Thanasi Kokkinakis and cereal manufacturer Kellogg Company, which is taking legal action against Kokkinakis’s proposed use of the mark Special K.
Rising through the Australian tennis ranks in his teens, Kokkinakis earnt the nickname ‘Special K’ as early as 2014 and has since moved to build on this publicity by using the name for commercial purposes. Under the company TJ Kokkinakis Pty Ltd, Kokkinakis is the holder of Australian Trade Mark Application No. 1685319 for the word mark Special K. The application was filed in April 2015, at a time when media attention surrounding Kokkinakis was high following successes in the 2015 Australian Open. Kokkinakis applied for the mark in three Classes (25, 28, and 41), indicating his interest to use the mark as a label for the sale of sportswear and tennis equipment, as well as in connection with the organisation of sporting competitions and provision of coaching. These commercial ambitions may be thwarted, however, owing to opposition from Kellogg.
After it was advertised in August 2015, Kellogg filed an opposition against Kokkinakis’s application in October of that year. Kellogg enjoys earlier rights to the Special K name, owning a number of trade mark registrations for the term in Australia (and worldwide). The earliest of these, Australian Trade Mark Registration No. 150093 for the word mark SPECIAL K, dates back to August 1958 and is protected for “breakfast foods and all other cereal foods”. Since this time, Kellogg has obtained another three Australian registrations for this mark in respect of breakfast foods/cereals in Class 30, as well as associated marks such as SPECIAL K LIQUID BREAKFAST, covering dairy-based beverages in Class 29. Interestingly, Kellogg has not registered its mark for the goods/services for which Kokkinakis has applied.
On 8 June 2017, the dispute had its first hearing at the Federal Court of Australia – a somewhat different court to those with which Kokkinakis is accustomed.
On the face of it, one may wonder: Why does this application, and Kokkinakis’s use of his nickname as a brand, matter to Kellogg? Given the parties’ respective commercial fields (sporting apparel and activities compared with breakfast foods and beverages), it may appear to some that the chance of consumers conflating the two is low.
Crucially, Kellogg has always marketed its Special K products as being low-sugar, low-fat healthy breakfast options. This case therefore emphasises the interface between ‘health’ foods and exercise, and raises questions over the extent to which these arguably complementary commercial fields overlap from a trade mark perspective.
This problem becomes even more acute in light of Kellogg Company’s use of famous athletes to endorse its Special K breakfast products, and its partnership with sporting bodies. Following the 2016 Rio Olympics, US gymnast Simone Biles was featured on the packaging of Special K products, and Kellogg Company is a sponsor of the United States Olympic Committee through Olympic and Paralympic Games (a role which includes serving Special K cereal bars at US Olympic Training Centres).
These links between Special K cereal and sport are not confined to the USA. In Australia, Kellogg’s Special K is an official partner of the AFLW, the female Australian Football League which commenced its inaugural season in 2017. The Twitter account for Special K Australia features a number of images of female sport stars wearing apparel bearing the Special K logo. Kellogg Company’s marketing of its Special K brand is therefore heavily intertwined with exercise and sport, bringing the actual use of the mark closer to that sought by Kokkinakis. Indeed, a Kellogg’s spokeswoman has even admitted that “[Kokkinakis’s] association could help, but at the end of the day it’s a trademark that we own and we want to continue to own”.
Having made use of the mark SPECIAL K since the 1950s in a number of countries worldwide, Kellogg has built a multi-national brand under this name. Although consumers are used to seeing the name first and foremost on breakfast foods, the brand’s repute means that Kellogg is likely to enjoy an enhanced degree of protection as a result of its global presence and enduring use of the name.
As this is a dispute which has been ongoing since 2015, court proceedings have only recently begun, and Wimbledon is almost upon us again, it may be some time until we know whether Kellogg Company or Thanasi Kokkinakis is the most special K.