Kellogg Company v TJ Kokkinakis Pty Ltd [2017] ATMO 58


This matter concerned an opposition by Kellogg Company to the registration of the trade mark SPECIAL K by TJ Kokkinakis Pty Ltd (a company associated with the Australian tennis player, Thanasi Kokkinakis).  The application covered goods and services in Classes 25 (clothing), 28 (sporting goods), and 41 (sports services).

Kellogg is the owner of several prior Australian trade mark registrations for SPECIAL K that cover food products in Class 30.  Given that the goods/services at issue are not similar, or closely related, Kellogg relied primarily on section 60 claiming that it holds a reputation in the trade mark SPECIAL K and as a result of that reputation, Kokkinakis’ proposed use of SPECIAL K is likely to lead to confusion.

On reputation, the hearing officer agreed that Kellogg certainly holds a reputation in SPECIAL K, gained through some 50 years of consistent use of the trade mark.  However, that reputation, in the hearing officer’s view, was limited to only the goods on which the SPECIAL K trade mark has been used by Kellogg (breakfast cereals).

In its evidence, Kellogg attempted to include use of the SPECIAL K trade mark on its breakfast cereals in connection with various sporting activities, which Kellogg argued would result in its reputation spreading beyond breakfast cereals and into the same areas as the goods and services of the Kokkinakis application.  The hearing officer was not persuaded by this argument and in finding that there would be no confusion likely noted:

I consider that a consumer upon seeing the Trade Mark applied to the [Kokkinakis] Goods and Services…would either not think of [Kellogg], or think of [Kellogg] and immediately dismiss the possibility of [Kellogg’s] involvement due to the difference between the [Kokkinakis] Goods and Services and [Kellogg’s] Goods.

Following the hearing officer’s decision that confusion would not be likely, the remaining grounds were also not established.

Whilst the Kokkinakis application was to proceed to registration, it appears that this decision is now the subject of an appeal.

To view the Office decision, click here.

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