Inquiries of the Judge:
(a) Whether the mark is distinctive? :: Research point: what are the competing standards
of distinctiveness?
(b) Whether the specification/description ought to be narrowed and specifically, narrowed
to “racing bicycles”? :: Research point : what are the precedents / positions of law
with respect to “drafting of the description” or narrowing the description?
(c) Whether there is similarity as per s. 57(2)? Or specifically, similarity between
skateboards and racing bicycles? :: Research point: How is similarity determined in
relation to (a) allied goods; (b) specification based comparison?
Under distinctiveness: whether the mark is distinctive? Sub-set 1: whether it is a
combination mark of a figurative device and word and thus inherently distinctive
Research required: what is the position of combination marks? What is the position of
combination marks involving foreign words? What is the position of combination marks
involving kanji characters? [It is highly likely that the findings in this research would favour
Marmalade and therefore, any research which reflects a loophole in this point ought to be
kept/captured for using it in favour of alinor]
Argument no. 1: how should the mark be read: “SELF SPEED” or “the speed range”/”tiger
speed bike”?
Cases mentioned in the judgment: Matratzen Concord; squared ventures and cantarella bros
Research required: How are marks understood for purpose of distinctiveness: (a) literally as
they are written or (b) in the manner consumers / users employ it ? (Cases/Articles supporting
point A will favour alinor and cases/articles supporting point B will favour Marmalade)
Argument no. 2: Is the mark descriptive?
Sub-set argument (argument based on the outcome of the first argument): Is the mark
descriptive if read as “SELF SPEED”? [[ Marmalade will argue: That the mark is not
descriptive; the mark is not descriptive, even if, it is read as “SELF SPEED”|| Alinor will
argue: that the mark is descriptive; the mark is descriptive when read as “SELF SPEED”; and
the mark is descriptive, even if, it is not read as “SELF SPEED” ]]
Cases mentioned in the judgment: “lexical invention” proctor & gamble;
Under non-use: whether the mark is susceptible to revocation / rectification on the grounds
of non-use? What should be the extent of revocation / rectification?
Larger research question: Are parties restricted to claim only that specific good for which the
mark is employed {research on this will favour A} or can the parties claim wider description
to capture the goods for which it is applied and allied goods as well?
argument: Whether there are grounds for narrowing of the description? To what extent the
narrowing down must happen? [Here, M will argue that no rectification is warranted as the
use justifies the description/ On the other hand, A will argue that rectification is warranted as
the existing description is too wide]
Research points: What is the interpretation of s. 34(5)? [How have the courts interpreted this
provision in any other non-use action? Here the cases where the courts have justified broad
description or refused to narrow down will favour M; whereas where the courts have used it
to narrow down description or even remove the mark will favour A]
Find provisions in EP/US/India pertaining to non-use (like s. 34 in the act)
Cases cited: Roger Maier and Thomas Holiday
Under Infringement: Whether there is infringement under s. 57(1)? Whether there is
infringement under 57(2)? [What is the scope of s. 57(1) and 57(2)(a) in relation to
infringement? What are the cases, favourable and unfavourable, on this point?]
Argument no. 1: What is the scope of 57(1)? Does 57(1) require absolute identity or does it
cover allied goods? [Research: find cases that interpret 57(1) or ‘double identity test’ to see
what is the scope of this rule: if it is interpreted strictly (that means requires absolute identity
of goods), then it favour alinor. On the other hand, if there is finding that it covers allied
goods, then it favours Marmalade] NOTE: the cases/articles/research that state that double
identity will cover allied goods will completely strike down alinor’s case in view of their
confession at para 18. Therefore, it is necessary to counter this point in alinor’s brief.
Argument no. 2: What is the scope of 57(2)? How is “similarity of goods” assessed?
[Research: find cases on statutory interpretation – literal interpretation v. contextual v.
purposive interpretation – or cases where 57(2) or like provisions have been interpreted; find
cases / articles on likelihood of confusion test and 57(2)]
Find provisions in EP / US / India pertaining to infringement (like s. 57 provided in the act)
Cases cited: british sugar
Admissions:
Marmalade:
Para 2: the Mark was developed because of the famous multi-stage road racing event, the
Tiger Tour, held in Shangri-La. Marmalade 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 (origin of the mark /
reason for adoption of the mark)
Alinor:
Para 5: Alinor does not seek to deny that it has used a sign that is identical to the Mark or that
its use occurred in the course of trade. (confession that the mark is identical and has been
used in the trade)
Para 18: Alinor concedes that if skateboards and racing bicycles are identical, all the elements
of section 57(1) have been made out and it will be liable under that provision. [confession
that if there is a finding that skateboards and racing bicycles are identical, then there is
infringement under 57(1)]