Back
IN THE HIGH COURT OF DELHI
C. Hari Shankar, J.
Armasuisse - Appellant
Versus
Trade Mark Registry - Respondent
C.A.(COMM.IPD-TM) 158 of 2022, I.A. 20094 of 2022, I.A. 20095 of 2022 and I.A. 20096 of 2022 and C.A.(COMM.IPD-TM) 159 of 2022, I.A. 20153 of 2022, I.A. 20154 of 2022 and I.A. 20155 of 2022
Decided On : 04-01-2023
Trademarks that may mislead consumers about geographical origin are non-registrable under the Trade Marks Act, reinforcing the need for distinctiveness and truthfulness in trade descriptions.
Headnote:(A) Trade Marks Act, 1999 - Sections 9 and 11 - Appellant opposed registration of trademarks "SWISS MILITARY" and a logo including a white cross on a red background - Appellant contended that registration would cause confusion as goods in question were not of Swiss origin - Issues included whether the marks indicated geographical origin and if they were registrable under relevant provisions - Court found the marks likely to confuse the public regarding their origin, leading to deception. (Paras 2, 4, 9, 11, 20, 67, 68, 153)
(B) The distinction between "deception" and "confusion" - The law requires trademarks to be distinctive and not misleading regarding their origin, ensuring consumer protection. (Paras 85)
(C) Statutory bar on registration of false trade descriptions - Marks that mislead the public about the country of manufacture are ineligible for registration. (Paras 70, 74)
(D) The Deputy Registrar must adhere to relevant provisions of the Trade Marks Act and cannot consider other laws not pertaining to intellectual property rights. (Paras 113-14)
Findings of Court:
The impugned marks were deemed non-registrable due to potential deception regarding geographical origin and misleading implications of Swiss affiliation.
Issues: Whether the marks constituted a false trade description, likelihood of confusion caused by the marks, and authority of the Registrar in considering other statutes.
Ratio Decidendi: The court concluded the trademarks were likely to deceive or confuse the public, leading to their ineligibility for registration under Sections 9 and 11 of the Trade Marks Act.
Result: The appeals were allowed, and the impugned orders regarding registration were quashed.
JUDGMENT
C.A.(COMM.IPD-TM) 158/2022, I.A. 20094/2022, I.A. 20095/2022 and I.A. 20096/2022
C.A.(COMM.IPD-TM) 159/2022, I.A. 20153/2022, I.A. 20154/2022 and I.A. 20155/2022
1. These appeals involve cognate issues. Submissions advanced at the bar by both sides are also overlapping. As such, they have been taken up and disposed of together.
2. The appellant is a Federal Agency of the Swiss Federation, and procures armaments for Switzerland`s Federal Department of Defence, Civil Protection and Sport. The appellant, therefore, represents, essentially, the military wing of the Swiss Government.
3. Respondent 2, in these appeals, Promoshirt SM S.A. ("Promoshirt", hereinafter) applied to the Registrar of Trademarks, New Delhi for registration of the trademarks (i) "SWISS MILITARY" in Class 25 in respect of clothing, readymade garments, footwear, headgear, coats, overcoats, jackets, jerseys, undergarments, socks and (ii) the mark 
in Class 25 in respect of "textile industries". Both applications were on "proposed to be used" basis. The appellant opposed the applications. The opposition of the appellant was rejected, and the trademarks were permitted registration by the learned Deputy Registrar of Trademarks vide separate orders dated 25th July 2022. The appellant has, by means of these appeals, assailed the said orders and, therefore, contested the right of the aforesaid trademarks "SWISS MILITARY" and to registration under the Trademarks Act, 1999 ("the Trademarks Act").
4. I may note, here, the appellant`s precise grievance. Mr. Pravin Anand, appearing for the appellant, submits that the appellant has no objection to Respondent 2 using the 
logo per se, as a white cross on a black background, for its products. His client, however, seriously objects to Respondent 2 being permitted to register or use either (i) a white cross on a red background, i.e. 
or (ii) the appellation "SWISS MILITARY". Neither mark, submits Mr Anand, can be permitted either to be registered or used, in view of various statutory proscriptions which are in place. What Respondent 2 actually uses, he seeks to point out, is 
, i.e. a white cross on a red background with the "SWISS MILITARY" appellation below it.
5. Inasmuch as the impugned order dated 25th July 2022, read with Section 10(2)1 of the Trade Marks Act, 1999, allows Respondent 2 to do so, the appellant calls the said order into question in these appeals.
6. Mr. Akhil Sibal, at the very outset of his submissions, submitted that his client was willing to restrict the registration of the impugned mark to a black and white colour combination, without using red. He, however, acknowledges that his client has other registrations for the white cross on a red background, i.e. , but states that those registrations are not subject matter of appeal. Mr Sibal would seek to nip these proceedings in the bud by submitting that, in view of the concession he makes, the grievance of the appellant, which is restricted to the use of the mark in a red-and-white colour combination, would stand assuaged.
7. Even if all submissions of Mr Anand were to be accepted, submits Mr. Sibal, the sequitur would not be the setting aside of the impugned order, but limitation of the registration of the impugned mark to a black-and-white colour combination. He also points out that the requirement for the application specifying the colour in which the registration of the mark was sought was introduced only in 2002, whereas the application of Respondent 2 was of 1999.
8. Mr. Anand does not take kindly to the suggestion. He submits - and justifiably, I feel - that Respondent 2 cannot seek to truncate these proceedings by the above concession, thereby leaving the appellant to fight the battle against the red-and-white mark all over again for another day, while it continues to use the said mark, in violation of the law. He also submits that he seriously disputes the entitlement, to registration, of the `SWISS MILITARY' appellation
