Blank theory citation

Indian case on imagination test descriptiveness to be cited

The mark 自己 SPEED is not distinctive

1. The mark 自己 SPEED is not a distinctive mark and thus not valid for trademark registration.
This is because of the fact that the mark lacks the characteristics for being fanciful and invented
word. Secondly, the mark is descriptive and the same is bolstered by applying the doctrine of foreign
equivalents. Lastly, the word is not to be read as a whole. This situation is further bolstered by the
fact that even in anti-dissection rule preliminary step is to perceive the meaning of the words
separately and not as a combination mark.

I.a. The trademark 自己 SPEED is not a ‘lexical invention’ being neither fanciful and
nor arbitrary to serve as an identifier.

The respondent respectfully submits that the mark does not possess the characteristics necessary
for a fancy mark. The argument is substantiated by the fact that is not fancy in nature as the word
SPEED attached with the mark makes it descriptive, generic and publici juris which describes
the nature of goodsservices offered1. The respondent submits that

In addition to thatthe court should take into account, there is a the legal danger inherited inent
use of a fanciful mark, if used on a new and unfamiliar product. The danger is that buyers will
take the mark and use it as the generic name of the new product itself. 2 Further the submission is
bolstered by the fact that the mark suggests the intended use of the goods and thus the mark is
not distinctive.3

The respondent submits that the mark used by the appellant is neither a coined term, nor a
syntactically unusual juxtaposition and nor an invention. The position is further bolstered by the

1
Home solutions retail (India) limited
2
Mccarthy on trademarks and unfair competition.
3
Procter & gamble v Ohim
fact that the mark is an appearance of invention only and not an actual invention. Moreover, a
mere combination of two known words would not be an invented word.4

The trademark is neither invented nor arbitrary in nature as the word will be perceived as
indicating bicycles and other vehicles propelled wholly by the rider. In this way the general
public does not associate the mark with the trader which is the basic function of a trademark.
Rather the mark relates to the very goods for which the mark is used by Marmalade. Thus
conveying the obvious meaning to an Erewhonian consumer and so the mark is not an
invention.The characteristics of an invented word are that the word must not only be newly
coined but must also be such a word as not to carry any meaning or any obvious meaning to the
man in the street5

I.b. The trademark is descriptive of the products

The trademark is descriptive of the products sold by Marmalade. This position is supported by
the fact that when the words of the mark are converted in English language they mean SELF
SPED which are prima facie descriptive and thus inherently incapable of registration. The
argument is further substantiated by the fact that even if the court does not apply the doctrine the
word, “SPEED” placed after the Shangri-Lese characters is descriptive of bicycles and other
vehicles wholly propelled by the rider.The respondent submits that the mark used by the
appellant is neither a coined term, neither a syntactically unusual juxtaposition and nor an
invention rather an appearance of invention only. Moreover, a mere combination of two known
words would not be an invented word.6

The court should consider the application of blank7 the application of blank theory and
imagination test. Firstly, the application of blank theory would reveal that an average
Erewhonian consumer will be conveyed the characteristics and ingredients of the product.
Secondly, It is submitted that the mental leap required to apply the imagination test between the
word and the product’s attributes is almost instantaneous in the present use of the mark.8
4
Eastman Photographic Materials Co. v. Comptroller-General of Patents, Designs, and Trademarks.
5
cf. Philippart v. William Whiteley Ltd. []; In the matter of the application of Linotype Company Ltd. [9].
6
Eastman Photographic Materials Co. v. Comptroller-General of Patents, Designs, and Trademarks.
7
8
Investacorp Inc. v. Arabian Investment Banking Corp., 931 F.2d 1519, 19 USPQ2d 1056 (11th Cir. 1991)
The descriptiveness of the mark is further bolstered with average consumer test and irrelevancy
of survey evidence.

Respondent submits that the court should view the rule of “reasonably informed shopper”. It is
assumed that the potential customer of Erewhon should have that amount of basic knowledge
about the product that most people would have from news and advertising. 9 Moreover, the court
should disregard the collected evidence when interpreting marks that contain foreign words
which have universal and common application. It is submitted that an average American would
interpret the mark as descriptive and generic.

Thus in the present case consumers of Erewhon will surely get confused when relating the mark
with associated goods. Additionally, descriptiveness is not determined by its meaning only to the
class of regular customers with the largest head count. So, the evidence presented by Marmalade
that no more than 5% of the Erewhon consumers know the language, Shangri-La, is irrelevant
and specifically denied.

I.c. The trademark 自己 SPEED is not a combination involving ornamental features, not being
a result of fusion of Shangrilese word 自己 with the word SPEED.

It is not ordinary that when examining a trademark, it is not dissected into its constituents but
always seen as a whole. Respondent submits that to separately view the component parts is a
preliminary step on the way to ultimate determination of probable customer reaction to the
composite as a whole.10 Thus the court should first view the component parts separately.
Moreover, it is perfectly acceptable to separate a compound mark and discuss the implications of
each part thereof with respect to the question of descriptiveness.11 Therefore, the trademark 自己
SPEED ought not be seen as a whole but as a combination of Shangri -Lese characters 自己.
When the mark is not seen as a whole and is rater seen as a composite mark the descriptiveness

9
Mccarthy on trademarks and unfair competition
10
Mccarthy on trademarks and unfair competition
11
In re Hester Industries, Inc., 230 USPQ 797, n.5 (TTAB 1986)
inherent in the mark becomes blatant and thus, incapable of relating itself with the trader. 3.
Combination mark

Applicability of the doctrine of foreign equivalents:

After testing the mark for descriptiveness in regard to the foreign word the court should decide
that the mark is familiar as it describes bicylcles and other land vehicles wholly propelled by the
rider.12

Likewise, the nature of the mark, the manner of its presentation, and the circumstances of its use
in connection with appellant’s goods support the finding that the mark is the type of foreign term
potential American consumers familiar with the foreign language would likely stop and
translate.13

It is submitted that the court should disregard the collected evidence when interpreting marks
that contain foreign words as they have universal value.

Application of Anti-Dissection rule

Respondent submits that to separately view the component parts is a preliminary step on the way
to ultimate determination of probable customer reaction to the composite as a whole. 14 Thus the
court should first view the component parts separately. Moreover, it is perfectly acceptable to
separate a compound mark and discuss the implications of each part thereof with respect to the
question of descriptiveness.15

Furthermore, discussion of each word separately in order to show that the term in its entirety is
descriptive is not the same thing as dissecting a mark.16

12
In re Hag Aktiengesellschaft, 155 USPQ 598 (TTAB 1967)
13
In re Weiss watch company
14
Mccarthy on trademarks and unfair competition
15
In re Hester Industries, Inc., 230 USPQ 797, n.5 (TTAB 1986)
16
In re Hester Industries, Inc., 230 USPQ 797, n.5 (TTAB 1986)
 I. The mark should be revoked or the specification should be rewritten

1. The mark 自己 SPEED and its specification “land vehicles propelled wholly by
the rider” are sufficiently broad for it to be possible to identify within it a number
of sub-categories capable of being viewed independently. All such categories
have not been put to genuine use by Marmalade. This position is further bolstered
by the fact that Marmalade has only used the mark in relation to Racing Bicycles.
Therefore, the protection conferred by the trademark 自 己 SPEED should be
narrowed down to racing bicycles.

I.a. The trademark 自己 SPEED has not been put to Genuine use in relation
to goods for which it was registered.

2. Section 4617 requires the Court to consider whether there has been genuine use in
relation to goods or services.18 Genuine use must be understood to denote use that
is not merely token, serving solely to preserve the rights conferred by the mark. 19
It is, therefore, appropriate to ask the question in those terms, namely in relation
to what services have Marmalade used 自己 SPEED? It is inevitable that at times
one would have to "dig deeper".20 The specification is broad and includes goods
such as Skateboard, roller skates, Rickshaws, Wheelchairs, baby walkers, etc.
However, the mark has been used only in relation to Racing Bicycles. Therefore,
the wide specification should be cut down on the ground of non-use.21

I.b. Fair description of the trademark according to Average consumer.

17
Section 46, Trade Marks Act, 1994.
18
Thomson Holidays Limited v Norwegian Cruise Line Limited [2002] EWCA Civil 1828, para 22.
19
Ansul [2003] ECR I-2439, para 36.
20
Minverva Trade Mark [2000] FSR 734.
21
Mercury Communications Ltd v. Mercury Interactive (UK) Ltd [1995] F.S.R. 850.
 3. The task of the court is to arrive, in the end, at a fair specification 22 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.23 It depends on the nature 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? Marmalade has used the
Mark in relation to a line of high-end road racing bicycles sold at specialist bike
shops. Further, Marmalade wanted to develop a brand name that would remind
target consumers (cyclists) of Shangri-La and the Tiger Tour. 24 Therefore, the
intended purpose of Marmalade 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 perceive and fairly describe the use of the
mark only in relation to racing bicycles.
4. It is unreasonable for Marmalade to argue that the trademark 自己 SPEED will be
used in future for offering other products with change in market conditions. It is
contrary to the internal marketing documents which states that the mark was
developed to remind the target consumers (i.e. Cyclists) of famous road racing
events, the tiger tour.25 Which implies that the sole purpose of Marmalade is to
sell Racing Bicycles. Therefore, the same ought not to be considered.

I.c. Sub categories capable of being viewed independently

5. If the categories/subsets are sufficiently broad so as to allow the identification

22
Animal Trade Mark [2003] EWHC 1589 (Ch); [2004] FSR 19, para 20.
23
West v Fuller Smith & Turner plc [2003] EWCA Civ 48, [2003] FSR 44.
24
Moot proposition, para 2.
25
Moot proposition, para 2.
26
Case T-126/03 Reckitt Benckiser (Espana) SL v OHIM (Aladin) [2005] ECR II-2861, para 45.
 6. The respondent respectfully submits that the specification ‘land vehicles propelled
wholly by the rider’ consists of various sub-categories of goods within it and
high-end racing bicycles and skateboards are 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 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. Moreover, a proprietor should not be
allowed to monopolise the use of a trademark in relation to a general category of
goods or services simply because he has used it in relation to a few of them. Thus,
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. 27 Therefore, the mark
should remain registered only in respect of racing bicycles, for which it has been
used.28

27
Decon Laboratories Ltd v Fred Baker Scientific Ltd [2001] RPC 293.
28
Roger Maier Assos of Switzerland SA v ASOS plc [2015] EWCA Civ 220, para 56.
 ISSUE 3: INFRINGEMENT

There is no infringement of the appellant’s trademark by the use of identical mark by respondent.
This argument is supported by double identity infringement test; the mark of Alinor does not
possess all similar elements as present in the mark used by Marmalade. This position is bolstered
by the fact that the mark used by Alinor does not relate consumers with the same manufacturer.
The position that there is no infringement caused is further bolstered when considering Dupont
factors analysis and the irrelevancy of average consumer test or survey evidence.

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

It is submitted that even if the marks are prima facie identical but actually they are not the same.

Applying double identity test though the marks are prima facie identical but actually after
categorization of the goods of Marmalade and Alinor it can be concluded that the marks are not
actually identical. In the case of LTJ Diffusion SA v. Sadas Vertbaudet SA29 the CJEU
confirmed absolute protection without further evidence in the case of double identity granted
under Article 5 (1) (a) of Directive 2008/95. 30 31 Moreover, the court said that the criterion of
identity between the two trademarks must be interpreted strictly.32

The ECJ concluded that “identical” in Article 5(1)(a) must be interpreted as meaning that a later
sign is identical to an earlier mark where it reproduces, without any modification or addition, all
the elements making up that mark or where, viewed as a whole, it contains differences so
insignificant that they may go unnoticed by an average consumer.

In the present case the matter that is compared is not similar in any respect whatsoever. Both
bicycles and skateboards are of different nature and used for different purposes. For example, the
racing bicycles (produced by marmalade) are used in racing tournament whereas the skateboards
(produced by Alinor) are used for fun and recreational purposes. Hence, both the products are
not identical and Alinor’s use of the trademark 自 己 SPEED doesn’t infringe the trade mark
rights of Marmalade.

The mark 自己 SPEED guarantees the origin of the goods of Marmalade and Alinor

As in the present case alinor’s use of the mark has not affected the trademark function of
Marmalade. It is submitted that CJEU has narrowed the it is submitted that the double identity
rule is narrowed on cases when unauthorized use has not affected the trademark’s functions.33 In
29
Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA [2003] ECR I-2799.
30
Directive 2015/2436, art 10(2)(a).
31
Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA [2003] ECR I-2799, para 49.
32
ibid, para 50.
33
Lisa P. Ramsey and Jens Schovsbo, ‘Mechanism for limiting trade mark rights to further competition and free
speech ‘(2013) 44(6) International Review of Intellectual Property and Competition Law 671, 678
other words, even if all the criteria for the double identity rule are satisfied as regards to identity
of trademarks, the identity of goods or services and the use in the course of trade, when the
conflicting trademark does not affect the essential function of trademark to guarantee the origin
of the goods to consumers, the legitimate trademark owner is not entitled to enforce his
exclusive rights. In the present Alinor’s use of even the identical mark does not relate or connect
the goods (skateboards) of Alinor with those of Marmalade.

In the present case the use of the mark by Alinor doesn’t affect the essential function of the
trademark to guarantee the origin of the goods to the consumers. Marmalade used the trademark
“ 自 己 SPEED” especially with regard to the tournament held in Shangri-La, also the bicycles
were sold only at specialist bike shops. On the other hand, use of the mark by Alinor nowhere
provides any link with the racing tournament also the skate boards made by Alinor aren’t sold at
any specialist shops rather are sold at places like toy shops. Hence, it does not affect the essential
function of trademark to guarantee the origin of the goods to consumers, and Marmalade is not
entitled to enforce his exclusive rights.

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

The modern restatement separates the list of foundational factors into three separate sections
listing six “market factors,” together with “intent” and “actual confusion.”34

Under the modern restatement, eight foundational factors are relevant to the determination of a
likelihood of confusion.35 These eight factors are-
1. The degree of resemblance between the conflicting designations;
2. It is submitted that there is no similarity of the marketing methods and channels of
distributions between the goods sold by Marmalade and Alinor.
3. The characteristics of the prospective purchasers of Erewhon and the degree of care
exercised by them for the products of Alinor and Marmalade is different.
4. In regard to the degree of distinctiveness of the senior user’s mark, it is submitted that the
mark is descriptive and not distinctive.
5. As the goods are not competitive, the likelihood that prospective buyers would expect the
senior user to expand into the field of the junior user is negligible.
6. Where the goods or services are sold in different territories, the extent to which the senior
user’s designation is known in the junior user’s territory;
7. The intent of Alinor (the junior user) is not to affect the legitimate interest of Marmalade;
and

34
Restatement (Third) of Unfair Competition pg. 20-23(1995).
35
J. Mccarthy, Mccarthy on trademarks and ufair competition.
 8. As it is already submitted36 that confusion is not decided by There is no Evidence of
actual confusion
The court should not apply any mechanistic formula or list as it will get forth in advance the
variety of elements that comprise the market context from which likelihood of confusion must be
determined”37. That is to say, the court should not base its reasoning only on the mark’s
identicalness, but on the other elements like difference between goods, their use and
users………………………………. This position is further bolstered by The ECJ held that
“identical” must be interpreted strictly on two counts – (a) the definition of “identical” implies
that the matter compared should be the same in all respects and (b) the absolute protection
afforded by Article 5(1)(a) cannot be extended to situations specifically protected by Article 5(1)
(b), that is, where a later sign identical to the earlier mark is used for similar goods or services or
a similar sign is used for identical or similar goods or services and there is, in each case, a
likelihood of confusion.

It is submitted that there exists no likelihood of confusion as the marketing methods and
channels for both racing bicycles and skateboards are different (they are sold at different stores).
Also, the characteristics of the prospective purchasers differ as the racing bicycles are bought by
the people who like to participate in the racing tournament however the skateboards are bought
by the people for recreational purpose and not for any competition.

In Parle Products (p) Ltd. v. JP & Co. Mysore 38 Supreme Court made the following observations:
it is submitted that court should consider the broad and essential features of the two . similarity
should not be determined by placing the marks side by side to find out similarity and differences
both graphically and phonetically. and if so, whether they are of such character as to prevent one
design from being mistaken for the other.

The survey evidence presented by Marmalade is irrelevant

It is submitted that reliance should not be placed on survey evidence while deciding whether a
mark is familiar to a group of certain people. This is because of the fact that In a paper 39 Barton
Beebe reviewed and analysed cases in relation to survey evidence and he then concluded that the
result, with surveys, are inconsistent and thus in practice, is of little importance.

In a paper40 Bird and Steckel They concluded that consumer surveys are not particularly useful
even in likelihood of confusion cases. Hence the argument of marmalade that public familiarity

36
Above mentioned citation in descriptiveness or survey evidence.
37
Restatement (Third) of Unfair Competition pg. 21, comment a (1995).
38
A.I.R. 1972 S.C. 1359.
39
 An Empirical Study of the Multifactor Tests for Trademark Infringement (95 Cal. L. Rev. 1581 (2006)).
40
The Role of Consumer Surveys in Trademark Infringement: Empirical Evidence from the Federal Courts (14 J.
Bus. L. 1013 (2012)).
should be considered which was based on survey result should be disregarded, not admitted and
specifically denied.

The actual confusion can be evidenced by presenting of the results of some survey among
consumers or by their testimony.41 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.42

41
Thane International, Inc v. Trek Bicycle Corporation [2002] 305 F.3d 894 (9th Cir.) 902.
42
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.