Trademark Infringement in Intellectual Property Law

This article discusses trademark infringement in intellectual property law with a case study on Alconogo and Alconono. It explains the grounds for rejection of trademark registration and the penalties for infringement. It also covers the importance of distinctiveness and prior use in trademark registration.

Running head: INTELLECTUAL PROPERTY LAW
Trademark Infringement
Name of the student
Name of the University
Author Note

1INTELLECTUAL PROPERTY LAW
INTRODUCTION
Jono is a software engineer who has developed an app. He has invested a prototype
electronic breathanalyzer which will be linked to the smartphone. Though there are various
other breathanalyzers in the market, the difference between the available products and that of
Jono’s is that Jono has devised a way to plug the mouthpiece with electronic components and
as a result the results will be displayed on the smartphone screen. The device along with the
app is named “Alconogo”. Finding himself unable to popularize the product in the market, he
spoke to a hardware manufacturer Tectonix where Jono presented his product. He received
very negative reviews for his product as Tectonix did not see a viable market for his product.
Though dejected, Jono applies the product for trademark registration under classes 9
and 41 and also applies for the logo to be registered which was rejected by the Intellectual
Property Office under section 3(1)b and 3(1)c of the Trade Marks Act. Jono comes across a
similar product named “Alconono” which is sold by Tectonix Ltd. The product has been granted
patent which has the same features like that of Alconogo-plugging the mouthpiece to the
smartphone to display the results on the screen.
Answer to Question 1.
Registration of the logo: The logo of Alconogo has been in use for 2 and a half years
but was rejected registration by the IPO under section 3(1)b and 3(1) c of the TM Act. Section 3
of the Act gives absolute grounds for rejection of registration of a trademark. The aim of section
3 of the TM Act is to prohibit monopoly of a mark which is not inherently distinctive and has a
direct reference to the nature of the product1. If the logo is distinctive of the product so much so
that it gives out the intended purpose of the product, it cannot be allowed registration2. The main
1 Ringelhann, Axel, and Stefan Martin. "Defining the EU certification mark." Journal of Intellectual Property Law &
Practice (2018).
2 Köklü, Kaya, and Sylvie Nérisson. "How Public Is the Public Domain? The Perpetual Protection of Inventions,
Designs and Works by Trademarks." TRIPS plus 20. Springer, Berlin, Heidelberg, 2016. 561-579.

2INTELLECTUAL PROPERTY LAW
element for registration of a trademark is that it should be distinctive but not descriptive. The
logo in question explicitly talks about drinking and driving, which is related to the function of the
app-breathanalysis which furthermore talks about drinking and driving. If the logo describes any
trait or characteristics of any product, it shall not be given registration because it designates the
quality of the product and cannot be registered.
Trademark Act 1994 grants exclusive rights to a trademark owner to prevent third parties
from infringing on their rights. Section 1 of the Trademark Act defines trademark as a mark
which can be graphically represented and which can be distinguished from one product to
another3. A mark includes a logo which can help in tracing the product to the source or the
producer.
When a product gives out information about its essence or worth through its logo, it is
said to have lost its idea of distinctiveness because it has used a mark which is already in the
public domain. The court refused the registration of the mark claiming that the logo gave out
enough information about the quality of the product and was not inherently distinctive. The logo
in the present case was a clear indication regarding the nature of the app because it showed an
image regarding prevention of drunk driving. Since the app was regarding breath analysis, the
logo can be said to be serving in trade to designate the functions of the product. The stance
taken by the court was on the similar ground that the logo of the app designates the function of
the app and there has lost its distinctive character that is essential while granting trademark4.
A mark shall not be refused registration on the grounds of section 3 of the TM Act if the
mark can show that it has acquired distinctiveness through prior use and the mark has been in
the mark for a significant time to acquire distinctiveness and the public can relate to the product
3 Tushnet, Rebecca. "What's the Harm of Trademark Infringement." Akron L. Rev. 49 (2016): 62
4 Yen, Alfred C. "Intent and Trademark Infringement." Ariz. L. Rev. 57 (2015): i.

3INTELLECTUAL PROPERTY LAW
by the mark. In the present case, the logo has been in use for 2 and half years. Prior use5 is an
exception to the grounds for refusal, that is the producer has to show that the target audience of
the product can trace the logo of Alconogo to Jono’s product. Jono has to prove that the product
has been in the market for a considerable amount of time for audience to relate to the product.
Answer to Question 2
Alconogo is a registered trademark which has been developed by Jono for
breathanalysis which is a special kind of product because it is linked to the smartphone where
the result is displayed on the screen. Jono comes across a similar product named Alconono,
whose function is identical to Alconogo. Jono, the producer of Alcongo had presented his idea
to Tectonix Ltd. to market his product which was refused by them. Later, Jono come across
Alconono which had similar specifications, that is, linking the breathanalyzer to the smartphone
to get the results.
Trademark Infringement: The main purpose of trademark registration is to prevent
unauthorized use of a mark by a third party to gain unlawful profit or damage the reputation of a
product in the public eye6. Trademark registration gives exclusive rights to the user of mark7.
The aim of registration is to ensure that the general public can trace the product to the producer
and they are made aware of the origin of the product. Trademark infringement happens in cases
of registered trademark when a third part used a product which is similar to the registered
product or uses the same product. To understand trademark infringement, attention has to be
drawn towards understanding what causes confusion in the minds of the consumers8.
Deceptively similar product is one which is so similar to the registered product that it causes
5 Iqbal, Asif, Mohammad Jomoa, and Tariq Zain El-Abdeen. "The Gulf Cooperation Council (GCC) Trademark
Law and its Impact on Current Saudi Trademark Law and Practice." (2015).
6 Xiaopeng, Liu. "Reviewing the Judicial Application of China's Trademark Infringement Compensation Principle
from the New Balance Case Study." Intellectual Property 10 (2015): 013.
7 Calboli, Irene. "Contributory Trademark Infringement on the Internet: Shouldn’t Intermediaries Finally Know
What They Need to “Know” and “Control”?." (2016): 211.
8 Yuan, S. H. U. "Study on Typed Standard of Punitive Damages of Trademark Infringement." Law Review 5
(2015): 017.

4INTELLECTUAL PROPERTY LAW
confusion in the minds of the consumers9. Section 10 of the Trademark Act 1994 deals with
infringement of trademark. Infringement of trademark takes place whenever a third party tries to
infringe on an already registered trademark and tries to pass it off as its own. Whenever an
infringer infringes upon a registered trademark, the intention is to gain unlawful profit out of the
well-knownness of a trademark10. In the present case, Jono has invented a product which is
unique in itself because a product of the same type has not been made before. The
breathanalyzer of Alconogo is an invention which has been granted registration by the
Trademark office. Alconono is another app in the market which sounds similar to Alconogo and
also deals with similar product. The sphere of work for both the products are the same-that is
both deal with breathanalyzer that when linked to a smartphone will show the result on the
screen of the smartphone.
The line of argument in the present case is that Alconono is identically similar to
Alconogo and the consumers will be confused regarding the products because they are very
similar to each other. Phonetic similarity applies when both the products have similar names so
much so that they sound identical as a result of which general people are confused. Alconono
and Alconogo are similar names dealing in similar products and as a result it will cause
confusion in the minds of the people. The idea of Alconono is to deceive the general public into
believing that Alconono and Alconogo are similar products. Alconono has infringed Alconogo’s
trademark with the intention of confusing the general public. Therefore, Alconono by Tectonix
has tried to infringe upon an already registered trademark of Alconogo to receive undue
advantage.
Section 14 of the Trademark Act lays down the penalties for trademark infringement. In
cases someone tries to embark upon an exclusive registered trademark, it shall give rise to
9 Trappey, Charles V., and Amy JC Trappey. "Collective intelligence applied to legal e-discovery: A ten-year case
study of Australia franchise and trademark litigation." Advanced Engineering Informatics 29.4 (2015): 787-798.
10 Smith, Nicholas. "Intellectual property: Misleading and deceptive conduct: When copying is not enough." LSJ:
Law Society of NSW Journal 11 (2015): 76.

5INTELLECTUAL PROPERTY LAW
trademark infringement. Moreover, when it can be proved that a trademark is trying to gain
mileage out of an already registered trademark, to cause detriment to the registered trademark,
it is liable for penalties11. Here, Alconono tries to gain undue advantage12 from the existing
reputation of Alconogo and as a result causes dilution of the reputation of the mark. ALconogo
is in the market for a considerable amount of time and has gained valuable reputation in the
market. By producing a similar product with identical, Alconono is liable to be penalized under
section 10 of the Trademark Act, 199413. Therefore, Jono can claim damages from infringement
as provided under section 14 of the TM Act.
Answer to Question 3
Jono is an app developer who has invented a unique app called Alconogo which will link
the breathanalyzer to the smartphone and the result will show on the screen of the smartphone.
Having made that app, Jono wanted to sell the same in the market so that it becomes more
popular and people start getting to know about the product and start using it. To make the
product more market viable, Jono talks to a hardware manufacturer, Tectonix Ltd. regarding the
marketing of the product. After giving him a presentation and explaining about the product, he
was told by Tectonix that the product does not have market viability and thus he will not market
the product. Jono later found that Tectonix Ltd. is selling a product by the name Alconono which
is dealing in the similar product specifications.
Tectonix had prior information about the product because Jono had given him a
presentation and thereafter Tectonix started selling the product in the market which goes by the
name Alconono, dealing in the same app regarding breathanalysis recorded through
smartphone. In this case, it is important to add that when Jono had shown the product to
11 Lunney Jr, Glynn S. "Trademark Law's De-Evolution: Why Courts Get Trademark Cases Wrong Repeatedly."
(2016).
12 Torremans, Paul. Holyoak and Torremans intellectual property law. Oxford University Press, 2016.
13 Schautschick, Philipp, and Christine Greenhalgh. "Empirical studies of trade marks–the existing economic
literature." Economics of innovation and new technology 25.4 (2016): 358-390.

6INTELLECTUAL PROPERTY LAW
Tectonix, his product was not a registered trademark. When Jono got to know about the product
Alconono, it was already a registered patent. The patent was obtained for a mouthpiece that
could be directly plugged into a smartphone and the result could be obtained on the screen of
the smartphone. The matter in question is not regarding patent infringement but trademark
infringement14.
Tectonix had prior knowledge15 of the product and the use of the same and he was
aware that the product is unique and that it has not been used in the market before. When the
presentation was given to Tectonix, Alconogo was not a registered trademark and after Jono
was refused to be marketed by Tectonix, it had filed for trademark registration. Tectonix later
marketed the product of a different producer which had a similar name Alconono which is
dealing with the same product. Infringement and passing off16 are two remedies available in
case a third party tries to use a mark unlawfully. In this case, the mark is registered and
therefore infringement is a remedy available to Jono.
Tectonix knowingly gave out the information to Alconono so that it can market the
product and gain unlawful profit from the product. Tectonix had gathered the information from
Jono and gave it to the producers of Alconono so that it profits in the market and he gains
advantage. The app has got a patent registered for the mouthpiece which can be linked to the
smartphone, which cannot be disputed because it is already registered for innovation. Jono can
file a case for infringement for using a similar mark and deceiving the public. Tectonix gained
the information from Jono and gave it to Alconono for them to make a similar product. Hence,
Jono can sue Tectonix for using the information in an unlawful manner to gain undue profit.
Conclusion
14 Dogan, Stacey L. "Whittling Away at Trademark Law's Notions of Harm." Jotwell: J. Things We Like (2017): 52.
15 Bently, Lionel, and Brad Sherman. Intellectual property law. Oxford University Press, USA, 2014.
16 Blackett, Tom. Trademarks. Springer, 2016.

7INTELLECTUAL PROPERTY LAW
There are three issues that has been discussed- ways to register the mark which has
been in the public domain for a considerable amount of time, but which was refused registration
by the Intellectual Property Office, whether Alconono and Tectonix Ltd. can be sued for
unlawfully using the product and using the information gained illegally with an ulterior motive.
Weighing all the possibilities and applying the principles of the Trade Mark Act liability can fixed
on Alconono and Tectonix for illegally using the mark. Analyzing the trade Mark Act, steps can
be taken to register the logo for the app which has been refused registration.

8INTELLECTUAL PROPERTY LAW
BIBLIOGRAPHY
Bently, Lionel, and Brad Sherman. Intellectual property law. Oxford University Press, USA,
2014.
Blackett, Tom. Trademarks. Springer, 2016.
Calboli, Irene. "Contributory Trademark Infringement on the Internet: Shouldn’t Intermediaries
Finally Know What They Need to “Know” and “Control”?." (2016): 211.
Dogan, Stacey L. "Whittling Away at Trademark Law's Notions of Harm." Jotwell: J. Things We
Like (2017): 52.
Iqbal, Asif, Mohammad Jomoa, and Tariq Zain El-Abdeen. "The Gulf Cooperation Council
(GCC) Trademark Law and its Impact on Current Saudi Trademark Law and Practice." (2015).
Köklü, Kaya, and Sylvie Nérisson. "How Public Is the Public Domain? The Perpetual Protection
of Inventions, Designs and Works by Trademarks." TRIPS plus 20. Springer, Berlin, Heidelberg,
2016. 561-579.
Lunney Jr, Glynn S. "Trademark Law's De-Evolution: Why Courts Get Trademark Cases Wrong
Repeatedly." (2016).
Ringelhann, Axel, and Stefan Martin. "Defining the EU certification mark." Journal of Intellectual
Property Law & Practice (2018).
Schautschick, Philipp, and Christine Greenhalgh. "Empirical studies of trade marks–the existing
economic literature." Economics of innovation and new technology 25.4 (2016): 358-390.
Smith, Nicholas. "Intellectual property: Misleading and deceptive conduct: When copying is not
enough." LSJ: Law Society of NSW Journal 11 (2015): 76.

9INTELLECTUAL PROPERTY LAW
Torremans, Paul. Holyoak and Torremans intellectual property law. Oxford University Press,
2016.
Trappey, Charles V., and Amy JC Trappey. "Collective intelligence applied to legal e-discovery:
A ten-year case study of Australia franchise and trademark litigation." Advanced Engineering
Informatics 29.4 (2015): 787-798.
Tushnet, Rebecca. "What's the Harm of Trademark Infringement." Akron L. Rev. 49 (2016): 62
Xiaopeng, Liu. "Reviewing the Judicial Application of China's Trademark Infringement
Compensation Principle from the New Balance Case Study." Intellectual Property 10 (2015):
013.
Yen, Alfred C. "Intent and Trademark Infringement." Ariz. L. Rev. 57 (2015): i.
Yuan, S. H. U. "Study on Typed Standard of Punitive Damages of Trademark
Infringement." Law Review 5 (2015): 017.