Delhi High Court: In a case wherein an appeal was filed by Armasuisse, the Federal Agency of Swiss Federation against the order of Registrar of Trade Mark (Registrar) permitting registration of the word mark ‘SWISS MILITARY’, a Single Judge Bench of C. Hari Shankar, J. set aside the Registrar’s decision and held that the marks ‘white cross on a red background’, ‘white cross on a black background’ and ‘SWISS MILITARY’ were all ineligible for trade mark registration.
Background
The appellant (Armasuisse) was a Federal Agency of the Swiss Federation and represented the military wing of the Swiss Government. The Respondent (Promoshirt) applied to the Registrar for registration of the trade mark ‘SWISS MILITARY’ in Class 25 in respect of clothing, readymade garments, footwear, headgear, coats, overcoats, jackets, jerseys, undergarments, socks, and the application was on “proposed to be used” basis. The appellant opposed the application but the same was rejected by the Registrar and the trade mark registration was granted.
The appellant had no objection to the respondent using the ‘white cross on a black background’ mark for its products but it objected to register or use either (i) a white cross on a red background or (ii) the word ‘SWISS MILITARY’. The appellant contended that the requirement for the application specifying the colour in which the registration of the mark was sought was introduced in 2002, whereas the application of the respondent was of 1999.
Issue for Consideration
Whether the mark depicting a ‘white cross on a red background’ and ‘SWISS MILITARY’ word mark, individually or in conjunction with each other, could be registered?
Submissions on behalf of the Appellant
Counsel for the appellant submitted that the impugned logo of Promoshirt could not be registered in view of the proscriptions contained in Sections 2(1)(i)(I) and 2(1)(i)(IV)(a) read with Sections 102 and 103, 9(1)(a) and (b), 9(2)(a) and 11(3)(a) of the Trade Marks Act, 1999 (Act). Further, it was contended that the impugned mark was a ‘false trade description’ within the meaning of Sections 2(1)(i)(I) and 2(1)(i)(IV)(a) of the Act and therefore, could not be registered.
It was also submitted that the impugned mark was being manufactured in China and not in Switzerland and therefore, by using the word mark ‘SWISS MILITARY’ and the distinctive red cross which constitutes Switzerland’s insignia, the respondent was seeking to make it appear that the goods were of Swiss origin which amounted to a ‘false trade description’. Therefore, the mark was ex facie non-registrable under Section 9(1)(b) of the Act. Counsel for the appellant submitted that as Switzerland was a large country with a lot of population, therefore, the word ‘Swiss’ could not be registered as a trade mark under the Act.
Submissions on behalf of the Respondents
Counsel for the respondents submitted that the respondents were the prior user of the impugned mark and had been using the mark since 1989. It was also submitted that the appellant had no registered trade mark, similar to impugned article, in India and all the applications filed by the appellant, had been filed after the registration of the impugned marks in favour of the respondent in India. It was submitted that the registration of a mark could not be allowed or refused depending on the way the applicant for registration was making use of the marks.
Analysis, Law, and Decision
The Court opined that “the right to registration must be sedulously guarded and any provision which abrogated, or even curtailed, the right to registration of a mark as a trade mark had, therefore, to be strictly construed. The right of registration to a mark could not be denied on fanciful apprehensions”.
The Court opined that “though the words ‘SWISS MILITARY’ when used either by themselves or in conjunction with the red and white cross may not provide any direct indication regarding the country of origin of the goods as would be likely to be misunderstood or mistaken as such, when the words ‘SWISS MILITARY’ were used in conjunction with the red-and-white cross, thus, any customer of average intelligence which would presume knowledge of the fact that the red-and-white cross was the indicia of the Swiss confederation, would regard the mark as indicating that the goods were of Swiss origin. The mark would, therefore, be an indirect trade description regarding the country where the goods, bearing the mark, were manufactured, or produced”. Therefore, the Court held that a mark which was a ‘false trade description’ with the meaning of Section 2(1)(za)(iv) could not be registered.
The Court opined that “the impugned mark, which not only uses the Swiss insignia, but also the words ‘SWISS MILITARY’ below, it would clearly, at the very least, confuse the consumer of average intelligence into assuming the goods to have been manufactured or produced in Switzerland”. Therefore, the Court held that the mark would, thereby, be a ‘false trade description’ and would be ineligible for registration under Section 2(1)(i)(I) read with Section 9(2)(a) of the Act.
Therefore, the Court set aside the order of the Registrar and held that the marks ‘white cross on a red background’, ‘white cross on a black background’ and ‘SWISS MILITARY’ were all ineligible for registration in respect of textiles, as claimed by the respondent.
[Armasuisse v. Trade Mark Registry, 2023 SCC OnLine Del 4, decided on 4-1-2023]
Advocates who appeared in this case :
For the Appellant: Advocate Pravin Anand;
Advocate Shrawan Chopra;
Advocate Madhu Rewari;
Advocate Vibhav Mittal;
Advocate Shree Mishra;
Advocate Achyut Tewari;
For the Respondent(s): Senior Advocate Akhil Sibal;
Advocate Anirudh Bakhru;
Advocate S.K. Bansal;
Advocate Rishi Bansal;
Advocate Ajay Amitabh Suman;
Advocate Anmol Kakkar;
Advocate Aditya Rajesh;
Advocate Aishwarya;
Advocate Asavari;
Advocate Sanya;
Advocate Tejaswini Chandrashekar.
*Simranjeet Kaur, Editorial Assistant has reported this brief.