LI.

The mark 自己 SPEED is distinctive

1. The mark 自己 SPEED is distinctive and thus capable of enjoying trademark registration.
This is on account of the fact that the 自己 SPEED is inherently distinctive being a lexical
invention when considered in relation to bicycles and “land vehicles propelled wholly by the
rider”1. This is especially so in the view that the trademark 自己 SPEED ought to be seen as a
whole and not dissected into its constituents. This position is further bolstered by the fact that
the purchasing public reads the trademark 自己 SPEED as “…..” or “….” and not in the
literal manner as suggested by Alinor. All of the above goes to show that in any event, the
trademark 自己 SPEED is not descriptive of the goods upon which it is applied.

I.a. The trademark 自己 SPEED is a ‘lexical invention’ being fanciful and arbitrary to
serve as an identifier.

2. The trademark 自己 SPEED is a lexical invention, that is, it is fanciful and arbitrary being a
combination of the words “自己” from the Shangri-La language and the English word
“SPEED”. The words together are unusual juxtaposition being not a familiar expression in
the English language2. This is because the trademark 自己 SPEED is not a word in general
use or comprehended within the boundaries of the usual vocabulary 3. This position is further
strengthened in view of the fact that the consuming public of Marmalade’s products
perceives the trademark 自己 SPEED as “the speed range” or a “tiger speed bike” and thus,
the presence of the Shangrilese character 自己 does not render the mark as devoid of
distinctive character but rather enhances the distinctiveness associated with it. Thus, even at
the best case of Alinor, without conceding to it but for argument’s sake, that the presence of
the Shangrilese character 自己 which means the word ‘self’ does not render the trademark
自己 SPEED as lacking distinctiveness because the linguistic and cultural differences 4
renders the mark wholly unique in Erwehonian context.
3. Tellingly, the trademark 自己 SPEED is also arbitrary in relation to bicycles or any type of
user propelled vehicle because the word 自己 SPEED has no alternative definition and
hence, its usage by Marmalade does not in itself signify either bicycles or any type of user
propelled vehicle. In this manner, the consuming public has also not associated the trademark

1
Paragraph 5, Judgment of Madam Justice Davies in Marmalade Holdings Inc v. Alinor Products Pty Ltd
2
Proctor and Gamble judgment paragraph 43
3
Collyrium Inc. v. Wyeth Bro Inc
4
Maratzen para 25
 with its literal meaning as sought to be canvassed by Alinor but has come to perceive it as
“the speed range” or “the tiger speed bike”. The upshot of this evidence is that the trademark
自己 SPEED is viewed by the consumers as a trademark communicating the identifying
function with Marmalade5. [[[FIND precedents / articles : which suggest that the mark should
be understood as understood by the consuming public ]]

I.b. The trademark is not descriptive of the products

8. It is self-contradictory for Alinor to argue that the trademark 自己 SPEED is descriptive of the
goods upon which it is applied in as much Alinor itself is attempting to employ this very same
trademark for its own products as the principal identifier. Though, Alinor has attempted to set-up the
defense that the trademark 自己 SPEED be read as “self-speed” in view of the doctrine of foreign
equivalents6 . However, the same ought not to be considered in view of that the doctrine of foreign
equivalents requires the assessment to be made under the test of “ stop and translate the word into its
English equivalent”7. That is, the doctrine of foreign equivalents can be applied only if the “average
purchaser would stop and translate” the foreign word and this must be substantiated by evidence 8.
Moreover the doctrine does not aplly in the cases where the trademark is a joint result of foreign
and English word.9 Thus, in view of the fact that the ordinary purchaser sees the trademark 自己
SPEED not as “SELF SPEED” but as “…..” or “…..”, therefore, the mark as a whole is distinctive.

I.c. The trademark 自己 SPEED is a combination involving ornamental features being a result
of fusion of Shangrilese word 自己 with the word SPEED.

4. It is trite that a trademark is not dissected into its constituents but always seen as a whole.
[[[FIND precedents / references to support the previous statement – also known as anti
dissection rule : PLEASE FIND THE JUDGMENT THAT EXPLICITLY PROHIBITS
BREAKING UP OF THE TRADEMARK USE IT HERE ]]] Therefore the trademark 自己
SPEED ought to be seen as a whole involving the Shangrilese character 自己 acting as an

5
Timothy Greene and Jeff Wilkerson, Understanding Trademark Strength,
https://cyberlaw.stanford.edu/files/publication/files/understandingtrademarkstrength.pdf Pg. 568
6
In re S Squared Ventures, LLC, Serial No. 86813357 (16 August 2017)
7
Palm Bay Import, Inc., 73 USPQ2d at 1696
8
Palm Bay Import, Inc., 73 USPQ2d at 1696; In re Innovative Technologies Corporation of America, Inc.
http://ttabvue.uspto.gov/ttabvue/ttabvue-78691831-EXA-13.pdf ; In re pan tex hotel corp 190 USPQ 109
9
French Transit Ltd. v. Modern Coupon Systems, Inc., 818 F. Supp. 635, 29 USPQ2d 1626 (S.D.N.Y. 1993).
 ornamental figurative device along side the word SPEED. When seen as a whole the
trademark 自己 SPEED is non-descriptive and thus, capable of identifying the products of
Marmalade.
5. Even otherwise, for the sake of argument without conceding on the previous submission, the
trademark employing foreign word must be adjudicated in view of the understanding of the
common public. Check and refer cases: Cantarella Bros Pty Ltd v Modena Trading Pty Ltd
[2013] FCA 810 || Smitsvonk NV’s Appn 1955] 72 RPC 117; Goodyear Tire & Rubber Coy’s
Appn [1957] RPC 173 and Wacker-Chemie GmbH’s Appn [1957] RPC 278 11|| ‘Kiku’
Trade Mark [1978] FSR 246 (Supreme Court of Ireland)
6. The mark is composite and thus, even if considered to be of two descriptive terms, it is as a
whole distinctive [You may refer Trademark Examination manual of US ; also refer
venkateswaran on trademarks (India) || check UK }} clear cases and principles.

1.It is to be argued that the mark is a fanciful and invented word

a. The mark is fanciful

It is submitted that the characters from Shangri-La with the word SPEED make the mark fanciful
and coined as the mark used do not indicate any ingredient and characteristics of the goods sold.
The marks are used so that consumers can connect it with “the speed range” or “a tiger speed
bike” communicating the message of foreign speed that is connected with Shangri-La.

Now if it is a fancy word non-descriptiveness is unnecessary.12 In addition to that it is also put

forward to the court that the Mark contains words which are from unique source13 and the first
portion of the mark is more obvious or dominant in creating the commercial impression14.

10
http://www.judgments.fedcourt.gov.au/judgments/Judgments/fca/single/2013/2013fca0008
11
http://classic.austlii.edu.au/au/journals/JlALawTA/2008/16.pdf
12
In re magnolia metal company 14 R.P.C. 621; L.R. (1897) 2 Ch. 371.
13
Charcoal Steak House, Inc. v. Staley, 263 N.C. 199, 139 S.E.2d 185, 144 USPQ 241 (1964).
14
Citigroup Inc v. capital city bank group Inc and In re Dixie Rests. Inc., 105 F.3d 1405, 1407 (Fed.Cir.1997).
b. the mark is invented

The appellant submits that the word used is a lexical invention and has a syntactically unusual
juxtaposition.15 In other words, the mark is invented as a totally new one and a unique
combination of a foreign word and an English word. Even if it is argued that the mark relates to
the character or ingredients of the goods the court should also consider that ‘many Courts have
held that an invented word can be registered as a trademark’16.

2.Descriptive-suggestive test

It is submitted that the ordinary meaning of the word in Shangri la is applied to the goods in
issue in a totally arbitrary and non-descriptive sense. Thus, the word does not have any
descriptive connotations and the mark is thus suggestive in nature.

Survey evidence

The fact is that a word found in a country’s language does not derogate from that word’s
trademark significance unless that meaning is understood descriptively by a substantial portion
of public.17

Similarly, ‘Only if some devotees of antiquity may recognise the descriptive feature of a mark is
irrelevant to the critical enquiry of the effect of the term upon a substantial segment of
prospective purchasers.’18

In the present case as the evidence tells that no more than five percent of the people of Erewhon
are proficient in Shangri-Lese at a conversational level or above so the court may conclude that
the mark is not understood descriptively by Erewhonian consumer.

The mark is suggestive not descriptive

As the information about the product or service given by the term used as a mark is indirect or
vague, then this indicates that the term is being used in a “suggestive,” not descriptive, manner.
In simple words, by placing the speed after the characters in Shangri-La Marmalade wants to

15
Procter & gamble v Ohim
16
Solio Case, Eastman Photographic Materials Co. v. Comptroller General of Patents, Designs, and Trademarks.
17
Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 131 USPQ 55 (2d Cir. 1961).
18
Stix products, Inc. v. United Merchants & Mfrs., Inc., 295 F. Supp. 479, 160 USPQ 777 (S.D.N.Y. 1968).
make his customers remind of Shangri-La and Tiger Tour. In addition to this, the mark is used in
relation to a line of high-end road racing bicycles which is an indirect reference.

Furthermore, the same evidence of consumer usage may be used to determine secondary
meaning as to determine whether the mark is descriptive or not in the first place.19

Application of Blank theory

The appellant submits the court should give a look to the “blank theory” theory according to
which ‘descriptiveness of the mark is to be tested by asking whether the word as used directly
conveys the characteristics, functions or qualities of the product to one who has never seen the
product and does not know what it is.’20 Applying the doctrine in the present case the court
should conclude that an average Erewhonian consumer will never be conveyed with the
characteristics and ingredients of the product.

Applicability of imagination test

The Supreme Court of Erewhon should give a look to the imagination test. Applying the test,
there is a direct relation between the extent of imagination or multi-stage reasoning process
required by consumers and the justification of the mark being suggestive. In the present case, as
consumers are required to be involved in the cognitive process if they conceive the word as
‘SELF SPEED’

The court may declare the mark suggestive.

As the puzzle of descriptive-suggestive is “so nebulous,” the Trademark Board takes the position
that doubt is resolved in favour of the applicant on the assumption that competitors have the
opportunity to oppose the registration once published.21

Combination mark

The doctrine of Foreign equivalents is not applicable

19
Application of Automatic Radio Mfg. Co., 404 F.2d 1391, 160 USPQ 233 (CCPA 1969).
20
Stix products, Inc. v. United Merchants & Mrfs., Inc., 295 F. Supp. 479,160 USPQ 777 (S.D.N.Y. 1968).
21
In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).
Even if the respondent wants the application of the doctrine of foreign equivalent, it is
respectfully submitted that the court should not allow the doctrine to be used in the present case
as when a trademark is a joint result of foreign and English word the doctrine of foreign
equivalents does not apply.22

Further, a new word can be meaningful to a certain extent and even if it has some connection
with foreign source the mark is not disqualified.23

It is respectfully submitted that the doctrine is not to be applied rigidly as it is not the sole
objective of the doctrine to translate foreign words verbatim from dead or obscure languages for
descriptive purposes.’24 It is merely a guideline which should be applied when it is likely that an
ordinary American purchaser would stop and purchase the product.25

The appellant submits that the nature of the mark, the manner of its presentation and the
circumstances of its use in connection with applicant’s goods do not support the finding that the
mark is the type of foreign term that an American consumer familiar with the foreign language
would likely to stop and translate.26

Application of the Anti-Dissection rule

Taking into account a term in toto and not by dividing it into its connected parts is what the anti-
dissection rule is. In other words, to consider a trademark in its entirety is the demand of this
rule.27 It is submitted that the combined word for the goods has the resulting commercial
impression such that consumers are likely to perceive the mark -as a whole- as primarily merely
the foreign mark.28 In other words, the combination of two or more admittedly descriptive
elements as a combination mark may result in a composite which is non-descriptive.29 Here as

22
French Transit Ltd. v. Modern Coupon Systems, Inc., 818 F. Supp. 635, 29 USPQ2d 1626 (S.D.N.Y. 1993).
23
Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd.
24
In re Northern
25
See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d
1689, 1696 (Fed. Cir. 2005).
26
In re Weiss Watch Company, Inc.
27
Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538,545-46,64 L. Ed. 705, 40 S. Ct. 414
(1920).
28
In re Weiss Watch Company, Inc.
29
Q-tips, Inc. v. Johnson & Johnson, 206 F. 2d 144, 98 USPQ 86 (3d Cir.), cert. denied, 346 U.S. 867, 98 L. Ed.
377, 74 S. Ct. 106, 99 USPQ 491(1953).
per the doctrine of foreign equivalents the words are descriptive, however when they are
combined they result in a word which is non-descriptive.

ISSUE 2: NON-USE
The specifications should be rewritten on the ground of non-use.

1. Genuine use in relation to goods for which mark is registered

Section 4630 requires the Court to consider whether there has been use in relation to goods or
services.31 Genuine use must be understood to denote use that is not merely token, serving solely
to preserve the rights conferred by the mark.32 It is therefore appropriate to ask the question in
those terms, namely in relation to what services have Marmalade used 自己 SPEED?

The respondent respectfully submits that mark has been used only in relation to Racing bicycles.
Appellant do not manufacture or sell goods which are covered under the broad specification i.e.
“land vehicles propelled wholly by the rider”. I think it is inevitable that at times one would have
to "dig deeper".33 It is further submitted that the specification also covers goods such as
Skateboard, roller skates, Rickshaws, Wheelchairs, baby walkers, etc. No such use has been
made by Appellant. It follows that the specification cover goods which have not been put to
genuine use by Appellant for at least 5 years and hence, the wide specification could be cut down
by a non-use attack.34 Therefore, the specification needs to be rewritten.

2. Fair description according to Average consumer

In the case of Animal Trade Mark35, it was stated that “The task of the court is to arrive, in the
end, at a fair specification and this in turn involves ascertaining how the average consumer
would describe the goods or services in relation to which the mark has been used, and
considering the purpose and intended use of those goods or services. 36 Thus the "fair description"
is one which would be given in the context of trade mark protection. A lot depends on the nature

30
Section 46, Trade Marks Act, 1994.
31
Thomson Holidays Limited v Norwegian Cruise Line Limited [2002] EWCA Civil 1828, para 22.
32
Ansul [2003] ECR I-2439, para 36.
33
Minverva Trade Mark [2000] FSR 734.
34
Mercury Communications Ltd v. Mercury Interactive (UK) Ltd [1995] F.S.R. 850.
35
Animal Trade Mark [2003] EWHC 1589 (Ch); [2004] FSR 19, para 20.
36
West v Fuller Smith & Turner plc [2003] EWCA Civ 48, [2003] FSR 44.
of the goods – are they specialist or of a more general, everyday nature? Has there been use for
just one specific item or for a range of goods?”

The respondent respectfully submits that the appellant has used the Mark in relation to a line of
high-end road racing bicycles sold at specialist bike shops.37 Appellant wanted to develop a
brand name that would remind target consumers (cyclists who compete in road racing or
triathlon, or who otherwise undertake a lot of road cycling) of Shangri-La and the Tiger Tour. 38
Therefore, from the facts it can be concluded that the mark has been used only in relation to a
line of high-end road racing bicycles and the intended purpose is to develop a brand name that
would remind target consumers of the tiger tour, the famous multi-stage road racing event.
Hence, the average consumer would fairly describe the use of the mark only in relation to high
end road racing bicycles.

3. Sub categories capable of being viewed independently

If non-use in respect of a significant subset of a wide general description is established, then the
court should eliminate that subset from the registration. In the case Reckitt Benckiser (Espana)
SL v OHIM,39 it was stated that if those categories/subsets are sufficiently broad so as to allow
the identification within them of various sub-categories which are capable of being viewed
independently then proof of use in relation to only one or more of those sub-categories will not
constitute use of the mark in relation to all the other sub-categories. There is no pressing need,
therefore, to confer on the proprietor of a wider protection than his use warrants by unduly
broadening the specification of goods. There is a balance to be held between the proprietor,
other traders and the public having regard to the use which has in fact taken place.40

The respondent respectfully submits that the specification ‘land vehicles propelled wholly by the
rider’ consists of various sub-categories of goods and services within it and high-end racing
bicycles and skateboards belong to two different sub-category which are capable of being viewed
independently. For instance, racing bicycles are designed for long distance on-road use
(including commuting) whilst skateboards are designed primarily for recreational use in parks

37
Moot proposition, para 1.
38
Moot proposition, para 2.
39
Case T-126/03 Reckitt Benckiser (Espana) SL v OHIM (Aladin) [2005] ECR II-2861, para 45.
40
Decon Laboratories Ltd v Fred Baker Scientific Ltd [2001] RPC 293.
and skating facilities. One is ridden upright on a platform that has four wheels whilst the other is
ridden seated on a frame that has two in-line wheels.

Furthermore, from the facts of the case it is established that the appellant has used the mark only
in relation to racing bicycles. Therefore, a proprietor should not be allowed to monopolise the
use of a trade mark in relation to a general category of goods or services simply because he has
used it in relation to a few of them. The mark should remain registered only in respect of those
goods and services for which it has been used. 41 Hence, the specifications should be narrowed
and rewritten by the court.

41
Roger Maier Assos of Switzerland SA v ASOS plc [2015] EWCA Civ 220, para 56.
 I. The mark stands on its current terms.
1. The mark 自己 SPEED has been put to genuine use, by the proprietor, in relation to
goods and services for which it is registered and thus stands on its current terms. The
specification is fairly written and it cannot be meaningfully categorized into sub-
categories other than in an arbitrary manner. That is to say that racing bicycles and
skateboards are similar goods covered within land vehicles propelled wholly by the
rider. Moreover, the trademark owner is entitled to wider protection for the registered
trademark to avoid the risk of confusion among the notional consumers.

I.a. The Trademark 自己 SPEED has been put to genuine use in relation to goods
and services for which it is registered.

2. The Trademark 自己 SPEED has been put to genuine use, that is, it is used in relation
to goods and services for which it is registered. Genuine use must be understood to
denote use that is not merely token, serving solely to preserve the rights conferred by
the mark.42 The fact that Marmalade manufactures bicycles and bicycle accessories,
which are sold through various possible outlets, represents that the trademark has
been put to genuine use in connection with43 the items for which it is registered.
Further, there is no need to dig deeper, 44 as there is no significant subset of land
vehicles propelled wholly by the rider.

3. The statutory test of section 46(1)(a) and (b) 45 required the court to compare the use
that had been made by the proprietor with the specification. If there was use within
the services in the specification, however broadly described, the trademark would not
be revoked partially or at all. It was only if the specification set out particular goods
or services in respect of which the trademarks had not been used would revocation be
necessary.46 Thus, Alinor’s contention of revoking the mark entirely is against the

42
Ansul [2003] ECR I-2439, para 36.
43
Premier Brands UK Ltd v Typhoon Europe Ltd [2000] FSR 767.
44
Thomson Holidays Limited v Norwegian Cruise Line Limited [2002] EWCA Civil 1828.
45
Section 46, Trade Marks Act, 1994.
46
Section 46(5), Trade Marks Act, 1994.
 provisions of the Trade Marks act 1993.47 Marmalade has used the mark for
manufacturing and selling bicycles and bicycle accessories which is within the scope
of the specification. The registered mark does not set out any particular goods or
services, in respect of which the trademark had not been used. Hence, the mark has
been used in relation to the goods for which it was registered and the specifications
should not be rewritten on the ground of non-use.

I.b. Further sub-categorization of Specification is Arbitrary.

4. Although the principle of partial use operates, it must not, however, result in the
proprietor of the earlier trademark being stripped of all protection for goods which,
although not strictly identical to those in respect of which he has succeeded in
proving genuine use, are not in essence different from them and belong to a single
group which cannot be meaningfully divided 48 other than in an arbitrary manner. 49
Moreover, it is impossible for the proprietor of a trademark to prove that the mark has
been used for all conceivable variations.50

5. Racing bicycles and skateboards are merely commercial variations of the similar kind
of goods under the specification “land vehicles propelled wholly by the rider”.
Therefore, these goods are not sufficiently distinct to constitute coherent categories or
sub-categories and further division will lead to Arbitrariness with the trademark
owner. Thus, proof of use in relation to racing bicycles will suffice for the whole of
that category. The desire is to be fair as between trademark owner and competitor to
ensure that the proprietor is not stripped of protection with respect to all the similar
goods or services for which the trademark has been used whilst ensuring space for the
competitor in the market.51

I.c. Wider protection to preserve the rights of the proprietor of the Mark

47
Section 34(5), Trade Mark Act, 1993 (given in moot proposition).
48
Roger Maier Assos of Switzerland SA v ASOS plc [2015] EWCA Civ 220, para 61.
49
Case T-126/03 Reckitt Benckiser (Espana) SL v OHIM (ALADIN) [2005] ECR II-2861, para 46.
50
Roger Maier Assos of Switzerland SA v ASOS plc [2015] EWCA Civ 220, para 60.
51
Case T-256/04 Mndipharma AG v OHIM [2007] ECR II-00449, para 24.
 6. It is not unjust for a trademark owner to benefit from protection in relation to a wider
range of goods than those in relation to which the mark is registered. 52 A Proprietor is
entitled to protection against the use of a similar sign in relation to similar goods if
the use is such as to give rise to a likelihood of confusion.53 This is, to strike a balance
between allowing “unjustifiably broad specifications to remain on the Register” and
limiting the specification of goods or services so narrowly that protection for similar
goods was denied.54

7. The consuming public, from the trademark 自己 SPEED, apprehends that the product
is manufactured by Marmalade. Racing bicycles and skateboard are the similar types
of goods. This position is strengthened in view of the fact that both are propelled by
the rider and there is no use of any engine in the process. Moreover, the rider pushes
it laterally against the ground with a wheel or a skate. Further, the channel of
distribution of both the product is also the same i.e. Department stores and sports
store. Thus, the above-mentioned factors establish that there are high chances that the
notional consumers will associate both the goods and their origin and the risk of
likelihood of confusion increases.

ISSUE 2: NON-USE
The specifications cannot be rewritten on the ground of non-use.

1. Genuine use in relation to goods for which mark is registered

The question to be considered, for determining that whether the Mark should be partially
revoked on the ground of non-use or not, is that whether there has been genuine use in relation to
goods or services for which the mark has been registered. 55 Genuine use must be understood to
denote use that is not merely token, serving solely to preserve the rights conferred by the mark.
Such use must be consistent with the essential function of a trade mark, which is to guarantee the

52
Daimlerchrysler AG v Alavi (t/a Merc) [2001] ETMR 98, para 76.
53
C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1998] ECR I-5507, para 18.
54
MIP Metro Group Intellectual Property GmbH & Co. KG v. Metro Industries Ltd.
55
Thomson Holidays Limited v Norwegian Cruise Line Limited [2002] EWCA Civil 1828, para 22.
identity of the origin of goods or services to the consumer or end user by enabling him, without
any possibility of confusion, to distinguish the product or service from others which have another
origin.56 It is therefore appropriate to ask the question in those terms, namely in relation to what
goods have Marmalade used 自己 SPEED.

In the case of Premier Brands UK Ltd v Typhoon Europe Ltd57, It was stated that one simply
looks at the list of items on the register and asks oneself, in relation to each such item, whether or
not the mark has been used "in relation to" or "in connection with" that item during the past five
years. If the answer is in the affirmative, then the mark can remain registered in respect of that
item; if the answer is in the negative then, subject to any question of discretion, the registration is
revoked in respect of that item.58 One does not dig deeper and, as it were, narrow a particular
category of item to reflect the extent of the goods to which the mark has been used.

It was further stated that the statutory test of section 46(1)(a) and (b) 59 required the court to
compare the use that had been made by the proprietor with the specification. If there was use
within the services in the specification, however broadly described, the trade mark would not be
revoked partially or at all. It was only if the specification set out particular goods or services in
respect of which the trademarks had not been used would revocation be necessary. In that case
section 46(5)60 applied.

The appellant respectfully submits that the proprietor has used the mark for manufacturing and
selling bicycles and bicycle accessories which is within the goods in the specification. The
registered mark does not set out any particular goods or services, in respect of which the trade
mark had not been used. Hence, the mark has been used in relation to the goods for which it was
registered and revocation cannot be done on the ground of non-use.

2. Further sub-categorisation of Specification will lead to arbitrariness.

Although the principle of partial use operates to ensure that trademarks which have not been
used for a given category of goods are not rendered unavailable, it must not, however, result in
the proprietor of the earlier trade mark being stripped of all protection for goods which, although
56
Ansul [2003] ECR I-2439, para 36.
57
In Premier Brands UK Ltd v Typhoon Europe Ltd [2000] FSR 767
58
Zippo Trade Mark [1999] R.P.C. 173.
59
Section 46, Trade Marks Act, 1994.
60
Section 46(5), Trade Marks Act, 1994.
not strictly identical to those in respect of which he has succeeded in proving genuine use, are
not in essence different from them and belong to a single group which cannot be meaningfully
divided61 other than in an arbitrary manner.62

The Court observes in that regard that in practice it is impossible for the proprietor of a trade
mark to prove that the mark has been used for all conceivable variations 63 of the goods concerned
by the registration. Consequently, the concept of 'part of the goods or services' cannot be taken to
mean all the commercial variations of similar goods or services but merely goods or services
which are sufficiently distinct to constitute coherent categories or sub-categories.

The desire is to be fair as between trade mark owner and competitor to ensure that the proprietor
is not stripped of protection with respect to all the similar goods or services for which the trade
mark has been used whilst ensuring space for the competitor in the market.64

The appellant respectfully submits that the further division of the specifications into different
sub-category is Arbitrary and unjust for the trademark owner. Racing bicycles and skateboards
are merely commercial variations of the similar kind of goods under the specification “land
vehicles propelled wholly by the rider”. Therefore, proof of use in relation to racing bicycles will
suffice for the whole of that category.

3. Wider protection to preserve the rights of the proprietor of the Mark.

In the case Daimlerchrysler AG v Alavi,65 it was stated that I do not consider it unjust for a
trade-mark owner to benefit from protection in relation to a wider range of goods than those in
relation to which the mark is registered. It is not reasonable to require a trade-mark owner to
register his mark in relation to all types of goods in relation to which use of his mark may give
rise to a risk of confusion, because he may not be using his mark in relation to such goods.66

Mark may only have been used in relation to some of the goods or services falling within the
specification, and such use may have been on a small scale. In such a case the proprietor is still
entitled to protection against the use of a similar sign in relation to similar goods if the use is
61
Roger Maier Assos of Switzerland SA v ASOS plc [2015] EWCA Civ 220, para 61.
62
Case T-126/03 Reckitt Benckiser (Espana) SL v OHIM (ALADIN) [2005] ECR II-2861, para 46.
63
Roger Maier Assos of Switzerland SA v ASOS plc [2015] EWCA Civ 220, para 60.
64
Case T-256/04 Mndipharma AG v OHIM [2007] ECR II-00449, para 24.
65
Daimlerchrysler AG v Alavi (t/a Merc) [2001] ETMR 98, para 76.
66
Canon v MGM [1998] ECR I-5507, [1999] RPC 117, para 51.
such as to give rise to a likelihood of confusion. 67 It was necessary to strike a balance between
allowing “unjustifiably broad specifications to remain on the Register” and limiting the
specification of goods or services so narrowly that protection for similar goods was denied.68

The appellant respectfully submits that racing bicycles and skateboard are similar type of goods.
This is established by the fact that both are propelled by the rider and there is no use of any
engine in the process. Moreover, the rider pushes it laterally against the ground with a wheel or a
skate. Further, the channel of distribution of both the product is also same i.e. Department stores
and sports store. Therefore, the above-mentioned factors establish that there are high chances
that the consumers will associate both the goods and their origin and likelihood of confusion
increases.

Hence, it is argued that in the light of above stated principles and the facts established, the
specification should not be rewritten and narrowed down to the extend that the protection against
the similar type of goods is lost which in all circumstances will give rise to likelihood of
confusion.

67
C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1998] ECR I-5507, para 18.
68
MIP Metro Group Intellectual Property GmbH & Co. KG v. Metro Industries Ltd.
 ISSUE 3: INFRINGEMENT

The mark 自己 SPEED is not identical as per the double identity test

It is submitted that the mark used by respondent is identical of the mark used by appellant. The
first important question when deciding whether there is infringement in the case of double
identity is whether the two conflicting trademarks are identical and in the present case the mark
used by respondent. It is submitted that the appellant enjoys absolute protection in the present
case. In the case of LTJ Diffusion SA v. Sadas Vertbaudet SA 69 the CJEU confirmed absolute
protection without further evidence in the case of double identity granted under Article 5 (1) (a)
of Directive 2008/95.70 71 Moreover, the criterion of identity between the two trademarks must be
interpreted strictly.72

It is stipulated that the court should interpret the markHowever, strict interpretation does not
mean the result of a direct rigorous comparison between two trademarks made by the specialists
in the field but rather from the perspective of an average consumer who does not examine the
difference between the two trademarks deeply.73 Therefore, when two trademarks differ only in
some insignificant features which are not noticed by an average consumer, they may still fall
under a double identity case.74 75 To support this fact it is put forward that though the products
sold by Alinor are different than those of Marmalade but that is insignificant and not to be
noticed by an average consumer of Erewhon. Rather what will be noticed by consumers is the
identicalness of marks. The evaluation as to whether the differences are insignificant and
unnoticed by an average consumer is a fact76 and is left to the national courts.77

The mark 自己 SPEED after being used by Marmalade does not guarantee the origin of the
goods of Marmalade.

It is submitted that an average consumer in Erewhon would associate the mark 自己 SPEED with
Marmalade as he has been selling racing bicycles and its parts under this mark for a long time
and when any reasonable man will see the same mark on a skateboard there is high probability
that the person can get confused as to whether the skateboard is also made by Marmalade or not.
Hence creating confusion in minds of people regarding the use of the mark 自己 SPEED.

As the earlier trademark, the one used by marmaladeThere is a general rule that, even when the
earlier trademark includes more categories than the conflicting trademark but also includes also
69
Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA [2003] ECR I-2799.
70
Directive 2015/2436, art 10(2)(a).
71
Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA [2003] ECR I-2799, para 49.
72
ibid, para 50.
73
ibid, para 53.
74
Ibid, paras 25-27. See also Bently and Sherman (n 76) 976.
75
Bently and Sherman (n 76) 976.
76
Bently and Sherman (n 76) 976, 977.
77
Case C-278/08 Die BerSpechte Outdoor Reisen und Alpinschule Edi Koblmiller GmbH v Gunter Guni, trekking.
at Reisen GmbH[2010] ECR I-2517, para 53.
those categories same for both trademarks, thenso the goods or services are considered identical
for purposes of double identity.78 Thus in the present case even if the mark as proposed by Alinor
includes more categories and products than the conflicting trademark. This position is bolstered
by the fact that by using the term SPEED on the mark Marmalade has got the right to sell all the
vehicles which are which wholly propelled by a rider. are related with speed and mMoreover
traders should be allowed to adapt their offerings as per the market conditions. 79( CITE R 80
page case)

It is submitted that the mark is registered by marmalade in Class 12 for “land vehicles wholly
propelled by the rider” skateboards and bicycles are vehicles which are propelled wholly by the
rider as the conflicting trademark includes the same category of vehicle, both racing bicycles and
skateboards will be considered to be identical. AndLastly, as conceded by Alinor80 that if
skateboards and racing bicycles are identical, all the elements of section 57(1)81 have been made
out and it will be liable under that provision.

The mark does not cause any likelihood of confusion in the minds of residents

The survey evidence presented is relevant

The actual confusion can be evidenced by presenting of the results of some survey among
consumers or by their testimony.82 If the result of this evidentiary proceeding is that enough of
consumers have been actually confused, then courts considers likelihood of confusion
established and they do not investigate other factors.83

The number of confused consumers required in order to establish actual confusion differs and the
court decide according to their discretion; approximately, the proportion is above 15% of the
confused consumers.84

It is submitted that in the present case the survey the number of people who were proficient in
Shangri-Lese language at a conversational level or above were 5% of the Erewhon’s population
which is evidently less than 15 % (required to establish actual confusion). Hence, it can be said
that the mark creates confusion in the minds of reasonable persons and infringes the trademark
right of Marmalade.

78
Bently and Sherman (n 76) 977.
79
Roger Maier Assos of Switzerland SA v ASOS plc [2015] EWCA Civ 220, para 61.
80
Moot proposition, para 18.
81
Section 57(1), Trade Marks Act, 1993.
82
Thane International, Inc v. Trek Bicycle Corporation [2002] 305 F.3d 894 (9th Cir.) 902.
83
Thane International, Inc v. Trek Bicycle Corporation [2002] 305 F.3d 894 (9th Cir.) 902. See also: Mark D.
Robins, ‘Litigation: Restraining Subjective Through A Factor-Based Approach to Valuing Evidence’ (2004) 2(2)
Northwestern Journal of Technology and Intellectual Property 1, 6.
84
RJR Foods, Inc v. White Rock Corp.[1979] 603 F.2d 1058 (2nd Cir.) 1061.
 The rule of doubt

Many courts have stated that when the issue of likelihood of confusion is in doubt, the question
will be resolved in favor of the senior user.85

Thus, in the present case the Supreme Court of Erewhon should give rights to use the trademark
to Marmalade, the legitimate user of the mark, as he is the senior and legitimate user of the
mark86. And thus the mark has become strong and well-known. As the Federal Circuit remarked:
“When balancing the interest in a famous, established mark against the interest of a newcomer,
we are compelled to resolve doubts against the newcomer.” 87 It is appealed that the court should
resolve doubts and questions against the newcomer i.e. Alinor.88 as he is the newcomer

It is submitted that in the present case Marmalade is the senior user and Alinor is the new comer
and hence the question should be resolved in Marmalade’s favor.

85
Lambert Pharmacal Co. v. Bolton Chemical Corp., 219 F. 325(D.C.N.Y 1915); William Waltke & Co. v. Geo. H.
Schafer & Co., 49 App. D.C. 254, 263 F. 650(1920).
86
Lambert Pharmacal Co. v. Bolton Chemical Corp., 219 F. 325(D.C.N.Y 1915); William Waltke & Co. v. Geo. H.
Schafer & Co., 49 App. D.C. 254, 263 F. 650(1920).
87
Specialty Brands, Inc. v. Coffee Bean Distribution, Inc., 748 F. 2d 669, 223 USPQ 1281 (Fed. Cir. 1984).
88
Specialty Brands, Inc. v. Coffee Bean Distribution, Inc., 748 F. 2d 669, 223 USPQ 1281 (Fed. Cir. 1984).