Infringement of Trademark Rights

Running head: INTELLECTUAL PROPERTY LAW
Infringement of Trademark Rights
Author Name(s)
Institution
Author Note

INTELLECTUAL PROPERTY LAW 1
Infringement of Trademark Rights
Issue:
In this case, the plaintiff, is Delicious Bakery Pte Ltd who registered proprietor trademark
rights for “AROMA CAKES” for their enterprise. However, the defendant, Sweet Treats Pte Ltd
have recently used “AROMATIC CAKES” for their trade. There are two questions the court will
be dealing with.
(a) Whether the defendants infringed the plaintiff trademark rights when they used the
“AROMATIC CAKE” in their trade?
(b) Whether the defendant has a possible defense for their use of “AROMATIC CAKE”?
Relevant Legal Principles:
The (Trademark Act, 1998) is the main legislation that deals with matters of trademark
infringement. The section 2(1) defines trademark as any sign which is capable of graphical
representation to distinguish the goods bearing that sign from the rest of the goods in the market
(Trademark Act, 1998). This means that any alleged trademark must have a visual representation,
and must be distinguishable from the rest of the goods in the owner’s course of trade. Signs that
are non-visual such as sound mark can also be registered provided that they are capable of
graphical representation. An example of these is a DJ sound or musical notes.
In regard to distinctiveness, the legal requirements are that the sign must be able to help
in distinguishing the owner’s goods from those of other traders. This is different from being
descriptive where the sign would be describing the goods. For instance, in the case of (Nestlé v.
Cadbury UK Ltd., 2016) the UK court ruled that the customer cannot still associate the shape of
the KitKat chocolate with Nestle. The key issue is that customers must be able to link the sign to
the owner of the products. In other words, when the customers see the trademark on any goods, it

INTELLECTUAL PROPERTY LAW 2
must create that conception that the goods come from a particular company or person. The Full
Federal Court of Australia explained this concept by stating that the use of trademark involves
using it as a badge of its origin thus creating a connection between the presence of goods in trade
and the manufacturer or supplier (Coca-Cola Co v. All-Fect Distributors Ltd, 1999).
Same as the definition, the infringement of trademark rights is the unauthorized use of
another person’s trademark through visual representation in goods or services in the same area of
trade. The law gives the registered owners de facto exclusive rights in the use of the mark for the
purpose of trade in the designated goods and services. Thus, infringement happens when an
unauthorized person uses the same or identical mark for the purpose of trade in similar or
identical goods or services. There is also infringement when the identical or similar mark causes
confusion when trading in similar or identical goods with those of the registered proprietor.
Under section S (27)(3), a person contravenes the rules of a registered trademark where
without the proprietor’s authority;
(a) The person uses the sign for the purpose of trade in commerce;
(b) Uses a similar sign as in related goods or services;
(c) The infringer’s sign can easily be confused with that of the proprietor when used in
related goods or services;
(d) Where the infringer’s use will create an assumption of connection with the
proprietor’s goods or sign.
Under section 28, acts of infringement include use of the proprietor’s sign where the sign
is used is;
(a) goods or services;
(b) exposure in goods in for sale;