Insights into litigation, sports law, media and legal culture

‘Special K’ trade mark dispute grabs headlines, but what about ‘The Big Kokk’?

In 2015, Australian tennis player Thanasi Kokkinakis was riding high. Only 19 years old, he’d made it into the  Top 100, and his prodigious talent was leading to wild card entries into Grand Slam tournaments such as the Australian Open and French Open. He even played in Wimbledon, doing well in the doubles with his compatriot, Lleyton Hewitt, where they were eventually beaten by the ultimate tournament winners.

For a player on the rise, one’s mind sensibly turns to fame, and the money you can make.  And so, treading the familiar path of the optimistic professional athlete, Kokkinakis considered the future, starting with trade marks.

On 7 April 2015, Kokkanakis (or to be precise, TJ Kokkinakis Pty Ltd, reported to be a company controlled by Kokkinakis’ father) applied to register SPECIAL K as a trade mark.  This was a nickname arising from when Thanasi Kokkinakis and Nick Kyrgios were “affectionately dubbed” the Special Ks when they played doubles together.

Also on 7 April 2015, Kokkanakis applied to register THE BIG KOKK as a trade mark.

More recently, he has applied to register SPITTING COBRA (possibly suggesting a theme…).

The trade marks are, or are intended to be, registered in relation to sports clothing, tennis apparatus, sports coaching, sports consultancy and the like (essentially class 25, class 28 and class 41).

It is SPECIAL K that has become the controversial trade mark. Go figure. No one complained when THE BIG KOKK was registered, not even the Trade Marks Office.  However, the SPECIAL K trade mark application has garnered recent publicity, because Kellogg Company opposes registration of the trade mark on account of its own famous breakfast cereal, appealing the Trade Mark Office’s acceptance of the Kokkinakis SPECIAL K mark to the Federal Court of Australia.

In fact, as trade marks, both SPECIAL K and THE BIG KOKK have their issues.

To illustrate some of the common pitfalls, let us pretend that we are all up and coming tennis stars, ready to cash in on our fame, before life has brought us back to earth with a thud through injuries and the hard yards of a come back trail. What should we consider when applying for a trade mark?

Well, here are few tips to put you on the right track to millions.

A. Choose A “G-RATED” Name NOt ONE THAT IS rated “R”

I’m not going to criticise THE BIG KOKK as a trade mark. Actually, yes I will.  It’s terrible. It fails the test of what you are hoping to achieve by obtaining a trade mark. Humorous? Maybe sort of. A good trade mark? No.

The starting point is whether a trade mark such as THE BIG KOKK will pass the scrutiny of The Good Taste Police, namely, the Australian Trade Marks Office.  Under section 42(a) of the Trade Marks Act 1995 (Cth.), the registration of a trade mark must be rejected if the trade mark contains or consists of scandalous matter.

Fortunately, the Trade Marks Office tends to be slow to act when refusing to register trade marks on this basis. IP Australia points out that words and images which might have been scandalous in another time can be acceptable now, at least in certain markets.  Further, what is “scandalous” to one person can be simply “poor taste” to another (e.g. ROOT GOOD). Humour can also have an ameliorating effect (e.g. BUGGER or DR PHUQ).

However, a word that is shameful, offensive or shocking, such as SNUFF (in the context of snuff films) will be rejected. So too, a trade mark that sounds the same as an offensive word can be rejected (e.g. KUNT). This suggests that THE BIG KOKK has fallen on the right side of registration, just.

The more significant issue is that, to me,  THE BIG KOKK fails the fundamental trade mark test: to help you make money. It is just not commercially viable.

This is because THE BIG KOKK may look okay in print, but its aural impression is more ‘Sexpo’ than ‘Australian Open’.

This means that, courtesy of advertising guidelines (for television,  radio and outdoor, at least), the owner of THE BIG KOKK sportswear range might only be permitted to compete for eyeballs in the late night infomercial category along with the George Foreman Grill, and Thighmaster.

Good business sense involves selecting a trade mark with mass market appeal rather than niche. For example, surfing is a physical activity open to brand names with sexual connotations. Examples of big brands in the market are ROXY, BILLABONG and QUICKSILVER. These are names that have gone for growth. They are sufficiently general that they allow room for the brands to evolve, and to generate brand extensions.

Importantly, what for a 19 year old might be a really funny name, might barely crack a smile when that person is aged 29 years old, and lead only to an embarrassed eye-roll when that person is 39 years old.  Think about the future, before incurring the costs of a trade mark now that you may have to live with for a long time.

B. Consider who might want to block your trade mark before you begin

Your conduct, if it leverages off a third party brand, will tread a fine between being tolerated as an homage, or rejected as dangerous.

The prospect that a nickname like ‘Special K’ would have been independently derived from the famous breakfast cereal brand is, basically, nil. After all, a double entendre is what typically makes a nickname witty and memorable.

For so long as Special K was used simply as a nickname in the affectionate double entendre category, the prospect of complaint by Kellogg’s would have been regarded as unlikely. Such use would only serve to reinforce brand associations in the minds of consumers, and therefore might be a good thing for the Kellogg’s brand.

However, applying to trade mark a name that involves leveraging off a well known brand name will inevitably be judged differently by that big brand. This is because such unauthorised conduct dilutes, and does not enhance, the big brand’s intellectual property rights in its own trade mark.

In IP law, a common refrain is “use it or lose it”. It is fatal to the effectiveness of a trade mark, and its underlying value, if the trade mark’s continuing ability to distinguish goods or services is compromised whether because the owner does not use the mark, or allows the relevant trade indicia to be appropriated by others. To “use” IP rights also means “to enforce” them. Otherwise, the Money, constituting intangibles such as ‘brand equity’ or ‘goodwill’ will disappear.

Accordingly, your affectionate nickname should stay just a nickname unless you are spoiling for a fight with a big brand owner.

C.FIGHTING WITH A BIG BRAND means YOU MUST BE READY TO GO THE DISTANCE

This means Court.  The administrative processes of the Australian Trade Mark Office (ATMO) can be lengthy and expensive (either because it takes time to convince ATMO that the trade mark should be registered, or because someone else has opposed the mark).  If that results in a victory, that is all well and good. However, this victory at the ATMO level can be hollow, when the loser then decides to appeal the decision to the Federal Court of Australia.  Particularly when the appeal is on a ‘start again’ basis.  Yes, trade mark appeals at the Federal Court are de novo.

Accordingly, two years after applying to register SPECIAL K, Kokkinakis finds himself defending a Federal Court appeal brought by Kellogg’s. Without the benefit of the court documents in that matter, one can only speculate about the legal basis for that appeal.

A likely ground is under section 60 of the Trade Marks Act.  SPECIAL K has been registered as a trade mark for Kellogg’s in the context of breakfast cereals for decades. Breakfast cereals are, on their face, a world apart from sporting goods.  However, the dietary / athletic context of SPECIAL K and its advertising over the years brings it closer to the sporting context (c.f. COCO POPS).

Section 60 provides famous brands with a basis to challenge registration of trade marks, even where the relevant classes of competing goods or services are not closely related.  To prevent Kokkinakis’ registration of SPECIAL K under section 60, Kellogg’s must show it has acquired a reputation of its own in SPECIAL K in Australia (which it will do), and that, because of this reputation, Kokkinakis’ own use of SPECIAL K would be likely to deceive or cause confusion. One can expect Kellogg’s to argue that a consumer confronted by a SPECIAL K tennis racket will wonder whether it has been endorsed by Kellogg’s SPECIAL K.

In case one court fight is not enough, sometimes a trade mark applicant might unwittingly find themselves defending two of them.  The first court action is to defend the trade mark appeal. The second court action is to defend an action for misleading and deceptive conduct under section 18 of the Australian Consumer Law.  Here, the brand owner sues the trade mark applicant for having the temerity to use the name for which a trade mark is sought.

Champagne Jayne is an example of a tenacious trade mark applicant who found herself having to defend multiple court battles instigated by the Champagne Industry.

You may now so horrified by the above, you have decided never to apply for a trade mark because of the hassle. Do not be deterred, because this next tip will overcome every single obstacle.

D. GO FOR A MADE UP NAME RATHER THAN A DESCRIPTIVE ONE

Choose a made up name every time. Examples of made up names are TELSTRA, SONY, GOOGLE and XEROX.

This is the secret to your success. It means you will obtain a registered trade mark swiftly, inexpensively, and be ready for launch very soon.  No-one will have a vested interest in wanting to oppose your made up name! And the Trade Marks Office will have no issue with it.

There is a sliding scale of registrability in which:

  • made up (or ‘coined’) words at one end of the spectrum are considered good trade mark candidates because they are inherently distinctive;
  • wholly descriptive names at the other end of the spectrum are not considered good candidates. because they are incapable of distinguishing the relevant goods or services (e.g. COLD AND CREAMY for ice cream, or CLOCK for time pieces).

Extensive use of a descriptive name may lead to acquired distinctiveness and ultimately registration, but this will be an expensive, lengthy exercise which most trade mark applicants will want to avoid (e.g SHARP for televisions). See this fact sheet for more information.

In the middle of this spectrum, there are a range of trade marks that are partly descriptive and partly distinctive. For example, Apple is a descriptive term for a fruit. However, applied to computers, APPLE takes on a more distinctive character. Such a mark is capable of being registered.

As to the origin of APPLE, Steve Jobs reportedly told Walter Isaacson that he was “on one of my fruitarian diets” and had just come back from an apple farm, and thought the name sounded “fun, spirited and not intimidating.”

CONCLUSION

Which trade mark should Kokkinakis pursue? SPECIAL K or THE BIG KOKK?

In my view, neither of them. His best trade mark is a third one, that is already on the register. No one opposed it, and it is G-Rated.

The winner is KOKKI, a third brand name that Kokkinakis applied to register as a trade mark, also on 10 April 2015.

KOKKI is a good trade mark candidate. It reminds people of ‘Kokkinakis’. It is patriotic, because consumers are likely to think of ‘Cockie’, as in Cockatoo. There is nothing offensive about it, and the name is sufficiently generic to stand the test of time.

 

2 Responses to “‘Special K’ trade mark dispute grabs headlines, but what about ‘The Big Kokk’?”

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