Mike Tyson, the famous former boxer, has sued Australian streetwear brand Culture Kings and its founders. Mr Tyson alleges the respondents have engaged in misleading and deceptive conduct under the Australian Consumer Law for using his name, nicknames and likeness to sell t-shirts, without his permission. Mr Tyson alleges that Culture Kings’ t-shirts bear images of him, his name as well as his monikers “Iron Mike”, and “Kid Dynamite”.
What is interesting about this case is Mr Tyson’s cause of action. Mr Tyson has not brought his claim under trade mark law. Mr Tyson does not own registered trade marks in Australia for “Mike Tyson”, “Iron Mike” or “Kid Dynamite”. It is common practice for celebrities and well-known people to register their names as trade marks for a wide range of goods (like jewelry, toys, fragrances and clothes) in order to have the exclusive right to apply their name to such goods.
Since Mr Tyson does not have trade mark registrations for his name or monikers in Australia, he cannot rely on trade mark law and instead is relying on other avenues in an effort to stop Culture Kings’ alleged conduct and to claim damages.
To establish his claim under the Australian Consumer Law, Mr Tyson needs to prove that the conduct of Culture Kings (and its founders) misled or deceived customers – or was likely to mislead or deceive customers – into falsely believing that he is somehow affiliated with, or has sanctioned or approved of, Culture Kings or its Mike Tyson t-shirts. This is arguably a higher hurdle to meet than would be required in a trade mark case.
If Mr Tyson had a registered Australian trade mark for clothing for “Mike Tyson” (or his monikers) and a brand like Culture Kings sold t-shirts emblazoned with “Mike Tyson”, he would not need to prove that consumers would likely be misled to make out trade mark infringement. He would instead need to show that his name was applied to the t-shirts without his permission and was being used on the t-shirts “as a trade mark” (that is, as an indicator of the source of the goods).
We always recommend that our clients file trade marks for important brand names or branding elements. A registered trade mark is a valuable IP right because it affords the owner an exclusive right to use that mark in relation to the registered goods or services, and take enforcement action against other traders who adopt the same or similar marks.