Australian tennis star Thanasi Kokkinakis has been taken to court by international cereal giant Kellogg’s in a case contesting the registration and use of the “Special K” trademark, which Kokkinakis reportedly wants to use as part of his branding and promotion.
AAP reports the case was sent to an August mediation in the Adelaide Federal Court, with Justice Brigitte Markovic providing time for Kokkinakis to file a defence and for Kellogg’s to amend its statement of claim.
The “Special K” trademark was first registered in Australia by Kellogg’s in 1958, in reference to its popular brand of cereal first introduced in the US in 1955.
The brand’s trademark is registered in the class of “breakfast foods and all other cereal foods”, with a number of other trademarks registered since covering other classes such as cereal bars and “cereal-derived food products”.
Kokkinakis’ “Special K” trademark was applied for in April 2015 by company TJ Kokkinakis Pty Ltd, a business AAP reports is believed to be operated by the tennis player’s father. The trademark application relates to various sport-related products, including clothing, shoes, equipment, and consultancy and coaching.
Kellogg’s opposed the trademark bid in August 2015, and court action has been pending since that time.
Kokkinakis’ “Special K” nickname comes about not only because of prevalence of the letter in his last name, but also because his regular doubles partner is fellow Australian tennis player Nick Kyrgios, and the two are commonly referred to as “the Special K’s”.
Commercial lawyer at Ampersand Legal Narissa Corrigan tells SmartCompany she believes the trademark registration attempt from Kokkinakis was “very optimistic”, saying the company would have expected the application to be opposed.
“There’s no what you would submit the application for that trademark without the expectation Kellogg’s would challenge it,” Corrigan told SmartCompany.
“It’d be very difficult to get such a trademark when the Special K brand is so well known. Find me an Australian that doesn’t know the cereal.”
Despite the two trademarks covering separate categories, Corrigan says it’s unlikely the two would be allowed to coexist, saying such an occurrence tends to happen only with lesser-known trademarks.
“Sometimes if you want to register the same trademark in different classes you could consider a co-existence deed with the existing holder, but I wouldn’t recommend that option when the other trademark is so well known,” she says.
“The issue is whether or not people would assume there’s some association with Kellogg’s and Kokkinakis, which [I believe] they likely would. There’s not much chance of this getting through.”
For SMEs daunted by the scary world of trademark registration when looking to lock down a new business name, Corrigan says the “number one” thing to ensure is to keep the trademark distinctive.
“Trademarks need to be distinctive, as SMEs will have little issue using an unregistered trademark when it’s distinctive from any other trademark registered,” she says.
“I recommend people do a lot of research or get some help before spending too much money on designs or logos, as it’s easy for someone to come out of the woodwork and claim your trademark infringes theirs.
“Even if it’s phonetically similar it could be enough to stop it, so be as distinctive as possible.”
In a statement to SmartCompany, a spokesperson for Kellogg’s reinforced the brand’s position on its 59-year-old trademark and committed to defending it.
“The Kokkinakis Company has applied to register Special K as a trademark and we are defending our trademark. There was a procedural hearing yesterday and the court has made procedural directions,” the spokesperson said.
“Kellogg’s will continue to defend our very strong and iconic Special K brand — which is known and loved by many Australians.”
SmartCompany contacted TJ Kokkinakis Pty Ltd and Kokkinakis’ agent but did not receive a response prior to publication.