The High Court of Delhi recently adjudicated upon a case that involved an appeal from Armasuisse (a Federal Agency of the Swiss Federation) against orders of the Indian Trade Marks registry granting trademark registrations to a private Indian company for the marks SWISS MILITARY and
in respect of class 25 goods.
As a background, Respondent 2 (Promoshirt SM S.A., hereinafter referred to as – “Promoshirt”) applied for registration of the trademarks – (i) SWISS MILITARY and (ii)
in Class 25 on an intent-to-use basis. These applications were opposed by the appellant before the Trade Marks registry, in which oppositions were rejected (and the trademarks were granted registration) vide separate orders dated July 25, 2022.
The appellant submitted (before the Court) that its primary objection is towards grant of registration (and use) of a white cross on a red background i.e.
as well as the mark SWISS MILITARY. The appellant contended that the impugned mark is a ‘false trade description’ within the meaning of Section 2(1)(i)(I) and Section 2(1)(i)(IV)(a) of the Trade Marks Act and was therefore, not registrable. They relied upon the invoices submitted by Respondent No. 2 which showed that the goods in respect of which Respondent No. 2 was using the impugned mark were manufactured in China (and not in Switzerland). They also contended that the mark is ex facie non-registrable under Section 9(1)(b) which proscribes registration of marks which ―consist exclusively of marks or indications which may serve in trade to designate, inter alia, geographical origin… of the goods.
On the other hand, the Respondent submitted that they are the prior user of the impugned mark and is using the mark since 1989. They also asserted that all of the appellant’s trademark applications in India are currently pending and have been applied for on an intent-to-use basis. They further submitted that there does exist a connection between the impugned mark and Switzerland, as – (i) Respondent No. 2 is based in Switzerland, (ii) the mark was initially adopted by the Boegli family, which was based in Switzerland, who later assigned rights in respect of the mark to Respondent No. 2 vide assignment deed dated 13th December 2014, (iii) Ashok Sawhney, the Non-Executive Director of Respondent 2 started his career in Switzerland, and (iv) refills, for the goods or Respondent No. 2, were manufactured in Switzerland. As regards the descriptiveness argument of the appellant, Respondent No. 2 submits that the appellant has led no evidence to establish that the red and white cross or the words SWISS MILITARY serve in trade, in India, to designate the geographical origin of textiles, on which they are used. Accordingly, they argued that the impugned order (of the Trade Marks registry) is correct in holding that they are fanciful when used in relation to textiles.
The Court came to the conclusion that Respondent No. 1 has not only used the white cross-on-red background indicia but also the words ‘SWISS MILITARY’ below it and accordingly, there is no justification for the Court to presume that the public would not be compelled into believing that the goods were made or manufactured in Switzerland. The Court came to the conclusion that the impugned mark, therefore, by its very nature, has the potential to deceive or, at the very least, cause confusion.
The Court also observed that –
“There is no explanation, whatsoever, forthcoming for Respondent No. 1 choosing to use, in its trade marks, the red-and-white cross-and-square Swiss insignia, or the words “SWISS MILITARY”. The use of the red-and-white cross-and-square Swiss insignia is not a right conferred on everyone, under Swiss law. The intent to confuse is obvious. The military establishment of a country would, by right, be entitled to use its official insignia. The use of the insignia, therefore, imbues the mark with a veneer of officialdom. The use of
with “SWISS MILITARY” below it, therefore, appears to be a clear attempt to confuse the unwary purchaser into drawing an association with the Swiss military establishment and the goods on which the mark is affixed.”
In light of the above, the Court set aside and quashed the impugned orders dated July 25, 2022, of the Trade Marks registry. The Court observed that the marks
and ‘SWISS MILITARY’ are all ineligible for registration in respect of textiles, as claimed by the respondent. The Court ordered for the trademark applications of the respondent to be ordered as rejected. It is relatively uncommon to see agencies of a foreign state initiating a legal claim before an Indian judicial body. It is interesting to see how the Court delved into each of the legal issues raised by the appellant (and effectively countered by the respondent).
