Kelloggs sues Australian tennis player over “Special K”

On 9 May 2017, American cereal manufacturer Kellogg Company commenced proceedings against a company owned by Australian professional tennis player Thanasi Kokkinakis, apparently in respect of Mr Kokkinakis’ use of the brand “Special K”.

It seems that Mr Kokkinakis wishes to use the brand “Special K” in respect of tennis equipment and tennis attire, as well as events.

Success in this matter might be very difficult for Kelloggs. All of Kelloggs’ “Special K” trade marks in Australia are related to cereals and, unsurprisingly, have no relationship with tennis-related goods and services.

Without knowing the details of the claim, further, it could not be reasonably said that consumers would be misled that Mr Kokkinakis is sponsored by Kelloggs. The brand is clearly derived from the first letter of his surname. It is a tongue-in-cheek reference to Kelloggs’ brand but one which would not cause confusion – members of the public would immediately recognise it as a pun. It would on the face of it be difficult for Kelloggs to assert a secondary reputation. In many ways, Kelloggs is “a victim of its own success” as described by Perram J in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354.

The matter may be the subject of recent news reporting but in fact it has an almost two year history. On 27 October 2015 Kelloggs opposed Mr Kokkinakis’ company’s trade mark application for “Special K” in respect of:

Class 25: Clothing for sports; Shoes for sports wear; Sports clothing (other than golf gloves); Sportswear Class 28: Apparatus for racquet sports Class 41: Arranging of sports competitions; Organisation of sports competitions; Provision of apparatus for sports; Sports club services; Sports coaching; Sports consultancy

Proceedings in the Federal Court commenced over eighteen months later, and a case management hearing was heard on 8 June 2017.  Media reports indicate that Kellogg’s must file and serve its amended notice of appeal and points of claim in relation to the opposition grounds by 19 June 2017.