By a common judgment passed on January 4, 2023, the High Court of Delhi allowed two appeals filed by Armasuisse, the military wing of the Swiss Federation engaged in procuring armaments for Switzerland’s Federal Department of Defence, Civil Protection and Sport, setting aside two separate orders passed by the Deputy Registrar of Trademarks on July 25, 2022 in Armasuisse’s oppositions against an Indian company, Promoshirt’s applications to register:
- “Swiss Military” in Class 25 in respect of clothing, readymade garments, footwear, headgear, coats, jackets, jerseys, undergarments, socks.
in Class 25 in respect of ‘textile industries”.
Grounds of Challenge
Armasuisse sought rejection of the applications on the grounds among others:
- that the impugned trademarks were “false trade descriptions” under the Trade Marks Act, 1999 (which came into force in 2003 and hereafter ‘the Trade Marks Act”) (Sections 2 (I)(i)(I) and 2(I)(i)(IV)(a));
- that the impugned marks would deceive and confuse the public into believing that the goods bearing these marks were of Swiss origin with an inherent association with the Swiss Army of Switzerland when in fact these were of Chinese origin and had no connection whatsoever with Switzerland (Section 9(2)(a));
- that registration of the impugned marks was liable to be prevented “by virtue of any law in particular the law of passing off protecting an unregistered trade mark used in the course of trade” (Section 11(3)(a)).
The judgment passed by the High Court of Delhi
Noticing the distinction between absolute and relative grounds, the High Court held that the proscription under Section 9 relates to the character of the mark itself vis-à-vis the goods on which it is used. If the mark, by its very nature and on its own, suffers from any of the disqualifications envisaged under Section 9, no occasion arises to refer to any other mark. The likelihood of deception and confusion has to be an attribute of the mark itself and seen on its own, and not in comparison with any other mark.
On the other hand, prohibitions under Section 11 are all proscriptions against registration of a trade mark, being “handicaps on registration in the light of earlier existing intellectual property intended at protecting existing intellectual property, essentially either from infringement or from passing off.
The High Court’s findings under Sections 9 (absolute grounds) and 11(relative grounds)
Whether the impugned marks constitute “false trade descriptions” and are of such nature as to deceive the public or cause confusion
The High Court agreed with Armasuisse that the impugned marks constituted “false trade descriptions”, being trade descriptions, which are untrue or misleading in a material respect as regards the country of origin of the goods and bound to cause confusion and deceive the public into drawing an association with the Swiss military establishment or with Switzerland. Repelling the Deputy Registrar’s finding that the average consumer would not assume the goods bearing the impugned marks to have originated from the Swiss military establishment, the High Court took judicial notice of the fact that ‘the engaging, by military establishments, in trade, is not an unknown phenomenon’ and that Armasuisse had itself applied for registration of the SWISS MILITARY word mark and 
in various classes of goods on an intent-to- use basis; that there is no explanation offered by Promoshirt to use in its trade marks, the-red- and-white-cross-and-square Swiss insignia, or the words ‘SWISS MILITARY’. In particular, the High Court noted the role played by the words “SWISS MILITARY” in conjuring up in the public mind an instant picture of the Swiss military establishment and a mental connection with Switzerland.
Whether registration of the impugned marks would be contrary to any law in force including the law of passing-off (Section 11(3) Ground 4 above)
The Court rejected Armasuisse’s interpretation that the words “any law” in Section 11(3)(a) would mean all laws in force in India and anywhere else in the world and held that:
- the expression “by virtue of any law” has to be understood in the backdrop of Section 11 as a whole and not in isolation. So understood, it would apply only to a law which relates to protection of existing intellectual property rights of others.
- the expression “earlier trade mark” is defined for the purposes of Section 11 to mean either a registered trade mark or a pending application or an unregistered well-known trade mark existing as on the date of an offending Accordingly, as required by Section 11(5), an objection to an application under the various sub-clauses of Section 11 can be raised only by way of an opposition by a proprietor of an earlier trade mark on the ground (i) that the proposed mark is identical with or similar to an earlier well- known trade mark, (ii) the use of the proposed mark in India is liable to be prevented by any law, in particular the law of passing off or the law of copyright.
- The power and authority of the Registrar stand circumscribed by the provisions of the Trade Marks If the right to use the mark, once registered, is subject to some other statutory proscription, that proscription operates outside the peripheries of the Trade Marks Act. If such proscription exists, and the proprietor of the trade mark violates it, the violation may invite sanctions as envisaged by such proscribing statute. The right to registration of the mark is unaffected by any such proscription. The Court observed that, to its knowledge, there does not exist, outside the Trade Marks Act, any proscription against registration of a trade mark….”
Analysis
The dispute before the High Court was primarily a trade mark dispute. It could be argued that its findings should operate within the narrow compass of the rights under the Trade Marks Act only. However, given the nature of the rival marks in dispute with strong evocations of Swiss origin, the judge’s findings of law as aforesaid would have implications for the protection of GI rights in trade mark opposition proceedings in India as explained below:
- The High Court’s main finding that the impugned marks “SWISS MILITARY” and constitute “false trade descriptions” fraught with a tangible risk of confusion and public deception, is unexceptional and sound in law and fact. However, it would appear that the High Court’s finding on the power and authority of the Registrar under the Trade Marks Act may be ‘per incuriam’ in so far as it fails to notice the overriding statutory provision of Section 25 of the Geographical Indications of Goods (Registration and Protection) Act, 1999 (“the GI Act”) which mandates that the Registrar of Trade Marks shall suo motu or at the request of an interested party, refuse or invalidate the registration of a trade mark which contains or consists of a geographical indication if use of such GI in the trademark is of such nature as to confuse or mislead the persons as to the true place of origin of such goods or class or classes of goods.
- Section (9)(2)(a) of the Trade Marks Act enacts an absolute prohibition against registration of a trade mark, which is of such nature as to deceive the public or cause confusion. The High Court has held that the said prohibition does not allow the court to travel outside the mark itself and that the mark, by itself, should deceive or cause confusion. The predecessor trademark statutes in India, namely, the Trade Marks Act of 1940 (“the 1940 TM Act”) and the Trade and Merchandise Marks Act, 1958 (“the 1958 TMM Act) contained similar ‘absolute prohibitions’ against registration of a trade mark whose use was likely to deceive or to cause confusion.
- by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of Justice ; or
- be likely to hurt the religious susceptibilities of any class of the citizens of India ; or
- be contrary to any law for the time being in force, or to morality.”
- the use of which would be likely to deceive or cause confusion; or
- the use of which would be contrary to any law for the time being in force; or
- which comprises or contains scandalous or obscene matter; or
- which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or
- which would otherwise be disentitled to protection in a court;
- it is of such nature as to deceive the public or cause confusion;
- it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
- it comprises or contains scandalous or obscene matter;
- its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950).
| Section 8 of the Trade Marks Act, 1940 | Section 11 of the Trade & Merchandise Marks Act, 1958 | Section 9(2) of the Trade Marks Act, 1999 |
|---|---|---|
| No trade mark nor part of a trade mark shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would-
|
A mark –
|
A mark shall not be registered as a trade mark if –
|
From a perusal of the aforesaid comparative table, it is clear that the scope of absolute prohibitions available under the 1940 TM Act and the 1958 TMM Act was much broader than that available under the current Trade Marks Act, 1999. Notably, the Registrar had the power under these earlier statutes to travel beyond the trademark statute to consider not only any other laws or matters which disentitled the mark to protection in a court, but also cover other deceptive conflicting marks.
In London Rubber Co. Ltd. V. Durex Products (AIR 1963 1882-3), the Supreme Court of India, while interpreting Section 8 of the 1940 TM Act, held that Section 8(a) is wide enough to cover deception or confusion resulting from any circumstance including where a mark is identical with or resembles the trade mark sought to be registered. Section 11(a) of the 1958 TMM Act also contained a similar prohibition against such trademarks whose use was likely to deceive or cause confusion. The jurisprudence in India interpreting these earlier statutory provisions is replete with examples where proprietors of reputed prior trademarks were able to successfully rely upon these provisions in securing rejection of conflicting trademarks.
Traditionally, GI owners have also successfully invoked these grounds in India in aid of their oppositions against proposed trade marks consisting of or containing or evocative of GIs. For example, the Scotch Whisky Association has secured refusal of such marks as “Highland Chief”, “Royal Scot”, “Glen Forbes”, “the Scottish Drummer” device etc. on the ground that these not only constitute “false trade descriptions”, but also indications the use of which would be likely to deceive and cause confusion as to origin and source. This became possible because the scope of Section 11(a) of the 1958 TMM Act was understood to be wide enough to cover deception or confusion resulting from any circumstance including the existence of any prior rights such as common law GI rights.
Conclusion
As per the ratio of the judgment, it would appear that the only ground available to a GI owner to oppose a trade mark in India containing or consisting of or evocative of a geographical indication would be the absolute proscription against “false trade description” in itself and as an incident of Section 9(2)(a) – a mark the use of which is likely to deceive the public or cause confusion. While the High Court leaves the window open for existing intellectual property rights of others to be invoked as a ground, the fact that it goes on to circumscribe the Registrar’s powers within the statutory ambit of the Trade Marks Act only and further fails to notice Section 25(1) of the GI Act may call for circumspection in adopting its reasoning as a precedent. On the other hand, it may be arguable that a GI owner could still rely upon the Section 25(1) GI Act ground on the basis that it imposes an absolute mandate on the Registrar of Trade Marks to refuse or invalidate a trade mark containing or consisting of a GI if use of such trade mark is likely to deceive or cause confusion. Given the wider scope of Section 9(2)(a) to cover deception or confusion arising from any circumstance, it may be possible to argue that such marks in violation of Section 25(1) would be of such nature as to confuse or mislead the persons as to origin and thus hit by Section 9(2)(a).
