ISSUE: 1 WHETHER THE USE OF THE SIGN BY ALINOR INFRINGED THE TRADE MARK

RIGHTS OF MARMALADE?

It is submitted that the use of the mark by Alinor doesn’t infringe the trade mark right of
Marmalade. The said act is based on 1.1 Distinctiveness of the goods 1.2 Non-use of the
mark by Marmalade 1.3 Similarity and identicality of the goods.
1. DISTINCTIVENESS OF THE GOODS

The mark contains letters which are combination of two languages i.e. Shangri-lese and
English. It is humbly submitted that if a mark includes both foreign words and English
language words then doctrine of foreign equivalence should be applied.
It is submitted that if the mark is read as SELF SPEED it is not a “lexical invention” as SELF
SPEED is descriptive of the bicycle and skateboard as the rider himself has to generate the
speed as there is no engine or other similar support system in the bicycles. Hence, the marks
lacks distinctiveness.
1.2 NON-USE OF THE MARK BY MARMALADE

It is submitted that Marmalade registered the mark in Class 12 for “land vehicles propelled
wholly by the rider” but has only used the mark only in relation to racing bicycle. Section
34(1) of the Trade Marks Act 1993, provides that if the mark is not used in relation to the
goods or services for which it was registered then the same may be revoked.
1.3 SIMILARITY OR IDENTITY OF GOODS

The test has been laid down to test the similarity of goods by Jacob J in British Sugar Plc v.
James Robertson & Sons Ltd that in order for a good to be similar the characteristics of the
respective uses and users of the goods; the physical nature of the goods; the trade channels by
which the goods reach the market; where each product is found in the shop; and whether the
goods are competitive. Applying this test to present case we find that bicycles and
skateboards are two completely different items. Hence they are not similar and the use by
Alinor of the mark is not infringing trademark right of Marmalade.