OXFORD INTELLECTUAL PROPERTY MOOT 2019

IN THE SUPREME COURT OF EREWHON

MARMALADE HOLDINGS, INC ….APPELLANT

v.

ALINOR PRODUCTS PTY LTD ....RESPONDENT

SUBMISSION FOR APPELLANT

TEAM KORAT
MEMORIAL for APPELLANT BODY OF ARGUMENTS

BODY OF ARGUMENTS

1. 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 “the speed range”
or “a tiger speed bike” and not in the literal manner as suggested by Alinor (hereinafter,
referred as ‘Respondent’). 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.

1.1. 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 language.2 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
(hereinafter, referred as ‘Appellant’) 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 the Respondent, 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 Erewhonian context.

1
Moot Problem para 11 p 3.
2
Case C-383/99 Proctor and Gamble Company v Offfice for harmonization in the internal market (OHIM)
[2001] ECR I-6251 para 43.
3
Collyrium Inc. v Wyeth Bro Inc. 167 Misc. 231 3 NYS.2d 42 (Sup Ct 1938).
4
Case C-421/04 Maratzen Concord AG v Hukla Germany SA [2006] ECR I-2303.

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MEMORIAL for APPELLANT BODY OF ARGUMENTS

(¶ 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 the Appellant 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 with its literal meaning as sought to be canvassed by the Respondent 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 the Appellant. 5 The mark should be understood as understood
by the consuming public.6

1.2. THE TRADEMARK IS NOT DESCRIPTIVE OF THE PRODUCTS

(¶ 4.) It is self-contradictory for the Respondent to argue that the trademark 自己 SPEED is
descriptive of the goods upon which it is applied in as much the Respondent itself is
attempting to employ this very same trademark for its own products as the principal
identifier. Though, the Respondent 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 equivalents. 7 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”.8 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.9 Thus, in view of the fact that the ordinary purchaser sees the trademark 自己
SPEED not as “SELF SPEED” but as “the speed range” or “the tiger speed bike” therefore,
the mark as a whole is distinctive. Moreover, the doctrine does not apply in the cases where
the trademark is a joint result of foreign and English word.10

1.3. 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

5
Timothy Greene and Jeff Wilkerson, ‘Understanding Trademark Strength’, 2013 6 Stan. Tech. L. Rev. 535
<https://cyberlaw.stanford.edu/files/publication/files/understandingtrademarkstrength.pdf> accessed on 5
November, 2018.
6
Manu Kagliwal v Mayo foundation for medical education and research (2018) 2 Mah LJ 720.
7
In re S Squared Ventures, LLC, Serial No. 86813357 (16 August 2017).
8
Palm Bay Imps., Inc v Veuve Clicquot Ponsardin Madison Fondee en, 73 USPQ2d 1696 (‘Palm Bay’).
9
Palm Bay (n 8); In re pan tex hotel corp 190 USPQ 109.
10
French Transit Ltd. v Modern Coupon Systems, Inc., 818 F Supp 635 29 USPQ2d 1626 (SDNY 1993).

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MEMORIAL for APPELLANT BODY OF ARGUMENTS

(¶ 5.) It is trite that a trademark is not dissected into its constituents but always seen as a
whole.11 Therefore the trademark 自 己 SPEED ought to be seen as a whole involving the
Shangrilese character 自 己 acting as an ornamental figurative device alongside the word
SPEED.12 When seen as a whole the trademark 自 己 SPEED is non-descriptive and thus,
capable of identifying the products of Appellant.

(¶ 6.) 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 or the broad spectrum of general community and thus
has the capacity to distinguish.13 The mark is composite and thus, even if considered to be of
two descriptive terms, it is as a whole distinctive.

2. THE DESCRIPTION OF THE MARK 自己 SPEED NEED NOT BE REWRITTEN OR

REVOKED ON THE GROUND OF NON-USE

(¶ 7.) 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. It is submitted that the specification is fairly
written as the trademark owner is entitled to wider protection for the registered trademark to
avoid the risk of confusion among the consumers. In no event, it can be argued that the
trademark registration ought to be confined with exact literalism to the very good it is
employed upon.

2.1. THE TRADEMARK 自己 SPEED HAS BEEN PUT TO GENUINE USE IN RELATION TO
GOODS AND SERVICES FOR WHICH IT IS REGISTERED

(¶ 8.) 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 because the use cannot be said to be token
done solely to preserve the rights conferred by the mark.14 The fact that Appellant
manufactures bicycles and bicycle accessories, which are sold through various possible
outlets and has created a share in the market, represents that the trademark has been put to
genuine use in connection with15 the items for which it is registered.

11
M/s. P.K Overseas Pvt. Ltd. & Anr v M/s. Bhagwati Lecto Vegetarians Exports Pvt. Ltd. & Anr. (2016) 160
DRJ (SN) 670.
12
The Registrar Of Trade Marks v Ashok Chandra Rakhit Ltd 1955 AIR 558, 1955 SCR (2) 252.
13
Goodyear Tire & Rubber Coy’sAppn [1957] RPC 173.
14
Case C-40/01 Ansul BV and Ajax Brandbeveiliging BV [2003] ECR I2439 para 36.
15
Premier Brands UK Ltd v Typhoon Europe Ltd [2000] FSR 767.

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MEMORIAL for APPELLANT BODY OF ARGUMENTS

(¶ 9.) As per the requirements of tests laid down under section 46(1)(a) and (b)16, the proper
comparison of specification with the products upon which the trademark is employed shows
that the Appellant’s use falls within the description. In other words, it is only when that it is
demonstrated that there is a particular entry for which the trademark has not been ever used
would the revocation or rectification be justified. 17 Thus, the Respondent’s contention of
revoking the trademark entirely is contrary to the law and merely a self-serving ruse to
unlawfully use the very same trademark for its own goods.

2.2. FURTHER SUB-CATEGORIZATION OF SPECIFICATION IS ARBITRARY

(¶ 10.) The revocation of partial use does not 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 18 other than in an
arbitrary manner.19 Moreover, it is impossible for the proprietor of a trademark to prove that
the mark has been used for all conceivable variations.20

(¶ 11.) Racing bicycles and skateboards are merely commercial variations of the similar kind
of goods under the specification “land vehicles propelled wholly by the rider”. It is because
these goods are not sufficiently distinct to constitute coherent categories or sub-categories
and further division will lead to Arbitrariness with the trademark owner.21 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.22

2.3. WIDER PROTECTION TO PRESERVE THE RIGHTS OF THE PROPRIETOR OF THE

MARK

(¶ 12.) 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 23 and thusly, it

16
Trade Marks Act 1994, s 46.
17
Trade Marks Act 1994, s 46(5).
18
Roger Maier Assos of Switzerland SA v ASOS plc [2015] EWCA Civ 220 (‘Roger Maier’) para 61.
19
Case T-126/03 Reckitt Benckiser (Espana) SL v office for harmonization in the internal market (OHIM)
{ALADIN} [2005] ECR II-2861 (‘Reckitt Benckiser’) para 46.
20
Roger Maier (n 18) para 60.
21
Reckitt Benckiser (n 19).
22
Case T-256/04 Mundipharma AG v office for harmonization in the internal market (OHIM) [2007] ECR II-
00449 para 24.
23
C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1998] ECR I-5507 para 18.

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MEMORIAL for APPELLANT BODY OF ARGUMENTS

cannot be a just outcome to deny benefit from protection in relation to a wider definition of
the goods.24 Therefore, Madam Justice Davies erred by amending 25 the specifications as it
curtails the rights of the proprietor of the mark.

(¶ 13.) 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 with the only inference that there is no necessity
of any amendment.

3. RESPONDENT’S USE OF THE MARK 自己 SPEED CONSTITUTES INFRINGEMENT OF

APPELLANT’S TRADEMARK REGISTRATION

(¶ 14.) At the outset, it is reiterated that the Respondent has conceded that the mark 自 己
SPEED is identical to the Appellant’s trademark 26, the usually controlling factor to trigger
trademark infringement.27 Therefore, the only questions left are: whether the Respondent’s
use of the mark 自 己 SPEED constitutes infringement of the Appellant’s trademark either
under Section 57(1) or Section 57(2) of Trademark act 1993. With respect to Section 57(1), it
is without exception clear that a skateboard is a “land vehicle wholly propelled by a rider”
and thus, the use of the trademark 自己 SPEED constitutes infringement. In any event, there
is a clear case for likelihood of confusion under Section 57(2) on account of the fact that
skateboards and racing bicycles are similar goods sold in similar trade channels to the same
set of consuming publics. In view of the foregoing, the Respondent’s use of the mark 自己
SPEED does not have any distinguishing function vis-à-vis the Appellant’s products.

3.1. THE RESPONDENT’S USE OF THE MARK 自己 SPEED CONSTITUTES AN

INFRINGEMENT UNDER SECTION 57(1)

(¶ 15.) It has been conceded by the Respondent that it does not contest the fact that it has
used the mark 自己 SPEED in course of trade and the only inquiry left under Section 57(1) is
whether its use in relation to skateboards would constitute infringement. It is further

24
Daimlerchrysler AG v Alavi (t/a Merc) [2001] ETMR 98 para 76.
25
Moot Problem para 16 p 5.
26
Moot Problem para 18 p 5.
27
CAE, Inc. v Clean Air Eng’g, Inc. No. 97-C-3264, 2000 WL 28274.

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MEMORIAL for APPELLANT BODY OF ARGUMENTS

submitted that, notwithstanding such concession, the use of the mark 自己 SPEED has been
in course of trade in the manner that the mark 自己 SPEED serves the function of principal
identifier to the common public.28 Furthermore, for purposes of inquiry under Section 57(1),
it is sufficient to establish that the trademarks have been used identically 29 for the identical
goods as the likelihood of confusion is presumed. 30 That is to say that the mark has been used
for racing bicycles and skateboards which are similar type of goods having same channels of
distribution. Conclusively, the Respondent has used the mark 自己 SPEED in the context of
commercial activity with a view to economic advantage and not as a private matter.31

(¶ 16.) Moving ahead, with respect to the inquiry whether there is infringement under Section
57(1), it is submitted that the Respondent’s use of the mark 自己 SPEED does not serve the
purpose of distinguishing the goods32 sold by the Respondent vis-à-vis the goods of the
Appellant and therefore, mere contention that skateboards are not “land vehicles wholly
propelled by the rider” or “racing bicycles” is not sufficient to escape the liability under
Section 57(1). Therefore, the use of the mark 自 己 SPEED by the Respondent adversely
affects the ability of the trademark registered in favor of the Appellant to fulfill its function,
in particular guaranteeing to consumers the origin of the goods 33, which in the present case, is
undoubtedly is the Appellant.

3.2. THE RESPONDENT’S CONTINUED USE OF THE MARK 自己 SPEED CONSTITUTES

INFRINGEMENT UNDER SECTION 57(2)

(¶ 17.) Without prejudice to the foregoing, the Respondent’s continued use of the mark 自己
SPEED on skateboards would constitute infringement under Section 57(2) of the Act
because, skateboards and racing bicycles are similar goods and there is likelihood of
confusion. This is because the goods of the Appellant and the Respondent are sold through
similar trade channels34 of department stores and sports stores35 and therefore, are sold to the
identical consumer base kept in the same physical location. Therefore, as can be seen it is but
certain that having regard to the goods, they would be displayed and made available for
purchase at the very same places.

28
Trademarks Act 1993, s 57(4); Moot Problem para 9 p 8.
29
Polaroid Corp. v Polarad Elect. Corp., 287 F.2d 492 (2d Cir. 1961).
30
The Agreement on Trade-Related Aspects of Intellectual Property Rights 1995, art 16.
31
Arsenal Football club v reed [2003] RPC 9.
32
Case C-63/97 BayerischeMotorenwerke AG (BMW) and BMW Nederland BV v Ronald Karel Deenik [1999]
ECR I-905.
33
Adam Opel AG v Autec AG ECLI:EU:C: 2007:55.
34
ITC limited v Green India Rice Millers and Exporters Private limited & Ors. (2017) SCC 5859 (‘ITC limited’).
35
Moot Proposition para 1,3 p 1.

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MEMORIAL for APPELLANT BODY OF ARGUMENTS

(¶ 18.) Also, the use of the mark 自 己 SPEED has likelihood of confusion as their target
audience is same in view of being sold through the same stores especially in view of the fact
that the trademarks being identical, there is already a high degree of similarity between the
goods and thus, the interdependence of these factors. 36 Therefore upon standing in the shoes
of an average consumer who will not be able to carry out a microscopic side-by-side
comparison but rely upon the imperfect recollection 37 would be confused as to the origin and
source of the goods.38 In other words the identicalness of the marks bears such a close
resemblance that one can easily be mistaken for the other. 39 Therefore, the average consumer
would not be able to distinguish the origin of the Respondent’s goods and would associate
them with the Appellant’s product as racing bicycles and skateboard are the similar types of
goods, both are propelled wholly by the rider. Moreover, the channels of distribution of the
two goods are also same. Thus, the they are allied and cognate goods 40 with the result that the
Respondent should not be allowed to continue to use the trademark. All this demonstrates
that there is a likelihood of confusion with the goods being similar and sold through similar
trade channels to target same audience. Thus, in view of Section 57(2), the Respondent must
be restrained from employing the mark 自己 SPEED upon its goods.

Word Count – 2982 words

36
C-39/97 Canon Kabushiki Kaisha v MGM [1998] ECR 1-5507 para 17.
37
C-342/97 Lloyd Schuhfabrik Meyer v Klijsen Handel [1999] ECR I-3819.
38
ITC limited (n 34).
39
Parle products(P) ltd v J.P. and Co., Mysore (1972) 1 SCC 618.
40
Asian Paints (India) Ltd v Satish Kumar & Others (2013) 201 DLT (CN B) 24.

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