Special K and beyond: tennis brands

Former InternKat Nick Smallwood has shared his thoughts on what happens what tennis players choose to trademark themselves.

The Special K’s: Kyrgios left, Kokkinakis, right. 

Australian tennis player Thanasi Kokkinakis is fighting an opposition from Kellogg's over attempts to trade mark his nickname (“Special K”).

Given that Kokkinakis is 21 years old and currently ranked no. 993, one might be forgiven for assuming that this is a brazen bit of brand banditry. The truth is more complex. One of a select group of players to have broken into the world’s top 100 before his 20th birthday, Kokkinakis and fellow Aussie teenager Nick Kyrgios were dubbed the ‘special K’s’ by the Australian media. Australian tennis fans predicted that one or other special K would end their nation’s Grand Slam drought, which has extended since Lleyton Hewitt’s 2002 Wimbledon title. After an injury plagued him 18 months, Kokkinakis served notice of his talent in the first round of the 2017 French Open by taking the first set off world no. 9 Kei Nishikori (who is apparently known as ‘special Kei’).

Special K

Infringement? 

Kokkinakis’ company – TJ Kokkinakis Pty Ltd – applied for an Australian trade mark in the following classes of goods: 

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. 

Kellogg's, meanwhile, holds a range of Australian trade marks for Special K in class 30, covering ‘Breakfast foods and other cereal foods’, ‘cereal bars’ and the like. 

On the face of it, it’s hard to see how Kellogg's could argue that cereal is similar to any of the goods covered by the Kokkinakis trade mark application. This means they will probably have to rely on the argument that: 

1. The Kellogg's ‘Special K’ marks have a reputation; or 
2. Kokkinakis’ use of an identical mark takes unfair advantage of, or is detrimental to the distinctive character/repute of the Kelloggs marks. 

Any Australian tennis fans out there? If you saw a ‘Special K’- branded racket or tennis bag, would you think Kellogg's, or Kokkinakis? If it’s the latter, then the young Aussie might just be ok (though it might help if he were to narrow the scope of the goods which the trade mark is intended to cover, sticking to ‘tennis wear’ rather than ‘sportswear’, for example). 

Tennis player brands

The best thing Kokkinakis can do for his brand is get healthy and start winning tennis matches again. Roger Federer and Rafael Nadal have registered a trade mark for their logos (see below), which they use on a range of goods, including sports clothing. One imagines that this is a fairly lucrative exercise – but only because they have had such huge success on the court. 

Nadal’s ‘raging bull’

Federer’s initials logo

The big-hitters in the women’s game have also sought to capitalise on their on-court success, with Serena Williams creating her own clothing line and Maria Sharapova using her 15-month drugs ban to release a range of ‘Sugarpova’ sweets. 

Tim Henman missed a trick by failing to exploit ‘Tiger Tim’ and, looking further back in history, surely “Gorgeous Gussie” Moran could have made a quick buck out of the moral storm and Parliamentary debate provoked by the short skirt and frilly knickers she wore at Wimbledon 1949. Arantxa Sánchez Vicario ought to have done more with “the Barcelona Bumblebee”, so too Boris Becker with “Baron von Slam.” And where were the gun-toting T-Shirts when “Pistol Pete” Sampras was in his pomp? As far as I know, Andy Murray’s po-faced coach, Ivan Lendl, has never sought to cash in on his either of his nicknames (The Terminator & Ivan the Terrible). 

Among current players, Bernard Tomic’s ‘Tomic the tank engine’ will run into obvious problems if any attempt is made to trade mark. Roger Federer’s ‘Fed Express’ is also questionable. In fact, it was probably inspired by FedEx – something about always delivering when it’s important. 

What are the morals of the Kokkinakis story, if any, for future tennis stars/brands? Perhaps these: 

1. Pick a catchy nickname before the public or the media picks one for you – and which may be unsuitable from a trade mark point of view. 
2. Take specialist legal advice about the ins and outs of trade marks.