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Likelihood of Konfusion?

June 13, 2017, By

Australian tennis player Thanasi Kokkinakis is in the middle of a trade mark dispute with Kellogg’s over his right to make commercial use of his nickname “Special K”.

The breakfast cereal production company has owned the right to use the “Special K” trademark in Australia for 59 years and wants to prevent Kokkinakis from using it as part of his branding campaign, which would include use in relation to clothing and sportswear.

Extra time has been allotted for Kellogg’s to amend its statement of claim and for Kokkinakis to file his defence, and the case is to continue at a mediation conference in August.

Briffa comment

Be on the look-out if you wish to protect your trade mark portfolio. If you are in Kellogg’s position, it is worth having a trade mark watching service in place to ensure that you are notified of applications for competing trade marks in advance and have sufficient time either to negotiate with the applicant or to oppose the application if negotiations do not lead to a satisfactory result. If the opposition deadline passes, and the application proceeds to registration, it can be cumbersome, time-consuming and expensive to have trade marks struck of the register later on.

Carry out a risk assessment before filing. If you are in Kokkinakis’s position and you are thinking about making a trade mark application, it is worth spending some time/money carrying out searches in advance (including searches on trade mark registers, domain registers, companies registers and search engines / social media) in order to assess the likelihood of an opposition (rather than finding out later on about potentially conflicting trade mark registrations, after significant investment has gone into the development of the brand).

Confusion is not always required for trade mark opposition/infringement. Trade mark applications are frequently opposed because the prior rights-holder believes that the applicant’s mark would cause confusion amongst consumers. But that is not always the case. In some cases, a trade mark application may be opposed because the prior rights-holder believes that the applicant’s mark would take unfair advantage of the reputation of the existing mark (e.g. that Kokkinakis would benefit unfairly from the reputation that Kellogg’s has built up in “Special K” over the years) and/or would dilute or tarnish the reputation of the existing mark (e.g. that Kokkinakis’s use of “Special K” would damage the reputation that Kellogg’s had built up in that phrase over the years).

Briffa advises on contentious and non-contentious trade mark matters and assists clients with trade mark applications, opposition proceedings, cancellation proceedings and infringement disputes in various jurisdictions around the world through its network of international agents. If you have any queries or concerns regarding your trade mark portfolio or brand management generally, or if you would just like some general advice, please do not hesitate to contact us on [email protected]

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