Special protection for 'Special K'?
Recent infringement proceedings raise interesting questions regarding the extent of protection that should be granted to a trade mark, writes Mike Shaw
The pending legal action commenced against the tennis player Thanasi Kokkinakis in Australia regarding his nickname ‘Special K’ illustrates the potential breadth of protection enjoyed by well-known trade marks.
Kellogg’s has recently initiated trade mark infringement proceedings in Australia against Kokkinakis in response to his attempts to protect and extend the use of his nickname ‘Special K’. Kokkinakis has adopted the moniker that plays on the well-known breakfast cereal produced by Kellogg’s and has allegedly expressed his intention to commercialise the name through use in relation to a range of merchandise including clothing and sports equipment. Kellogg’s clearly sees such steps as a threat to its own trade mark and has taken steps to challenge Kokkinakis.
Although the action is still in its early stages, the case does raise interesting questions regarding the extent of protection that should be granted to a trade mark. In the field of tennis, it is more than likely that the name ‘Special K’ has come to be associated with Kokkinakis, rather than with Kellogg’s. Equally, insofar as breakfast cereals and cereal bars are concerned, the name is clearly associated with Kellogg’s. However, in relation to other products, such as clothing, bags, sunglasses, and sporting equipment, it remains to be seen whether the public associate or connect such products with Kellogg’s or not.
Under UK law, a trade mark registration grants to the proprietor the exclusive right to use that trade mark, in the course of trade, in relation to the goods or services for which the mark is registered. The law is intended to protect the essential functions of the trade mark, in particular the key purpose of a trade mark in identifying the commercial origin of the goods and services supplied under that mark.
Any third party who uses the trade mark on a commercial basis, in relation to goods or services identical to those for which the trade mark is registered, will infringe the trade mark registration, provided that it can be shown that such use has an adverse effect on the essential functions of the trade mark. Equally, any use of the trade mark (or a similar trade mark) in relation to goods or services similar to those for which the trade mark is registered will also infringe the trade mark registration, provided that the public are likely to confuse or associate the trade marks.
Trade mark reputation
However, if it can be shown that the registered trade mark enjoys a reputation, the law goes further than this and provides protection in relation to goods and services irrespective of whether or not they are identical with or similar to those for which the mark is registered. In order to balance this protection granted to trade mark owners with the public policy interest of free trade, the law does lay down a number of strict requirements that must be met in order to enforce a trade mark with a reputation in this way.
In particular, at least one of the following must be present:
The third-party use of the trade mark must be likely to take advantage of the reputation enjoyed by the trade mark, i.e. the use must amount to ‘free-riding’ in the sense that the public would only purchase the goods or services because of the connection or link made with the trade mark;
The third-party use must be likely to ‘dilute’ the reputation and distinctive character of the trade mark, by weakening the trade mark and affecting the trade mark owner’s ability to extend its product range into other areas; or
The third-party use must be likely to damage or ‘tarnish’ the reputation enjoyed by the trade mark, such that the power of attraction of the trade mark is reduced – for instance, use of the trade mark in relation to poor quality products could well reflect badly on the genuine products supplied by the trade mark owner.
Insofar as Kokkinakis is concerned, it is more than likely that Kellogg’s will be able to prove that it enjoys a substantial reputation. However, it remains to be seen whether Kellogg’s can show that Kokkinakis’ activities in relation to clothing and sporting equipment would cause confusion, or amount to free-riding, dilution, or tarnishing.
Mike Shaw is a partner and chartered (UK) and European trade mark attorney at Marks & Clerk and is an ordinary member of CITMA