Armasuisse v. The Trade Marks Registry & Anr. (2023)
Factual Background
The appellant, Armasuisse, a Federal Agency of the Swiss Federation responsible for procuring armaments for Switzerland’s Federal Department of Defence, Civil Protection and Sport, opposed the registration of trademarks applied for by Respondent 2, Promoshirt SM S.A.
Promoshirt sought for multiple registration of the marks “SWISS MILITARY” with or without a white cross on a red background (the Swiss insignia/ Swiss Cross) in Class 25 for clothing and textile goods, on a “proposed to be used” basis.
The learned Deputy Registrar of Trademarks, Delhi rejected the appellant’s opposition and allowed registration of the marks. The appellant challenged these orders through these appeals, contesting the entitlement of the trademarks to registration under the Trade Marks Act, 1999.
Analysis of Delhi High Court
The Court recognized the valuable commercial right conferred by trademark registration and emphasized that any statutory prohibition on registration must be strictly construed. The Court examined the impugned mark in light of the relevant provisions of the Trade Marks Act, particularly Sections 2(1)(i)(I), 2(1)(i)(IV)(a), 9(1)(b), 9(2)(a), and 11(3)(a).
1. False Trade Description
On the issue of “false trade description,” the Court held that any mark which directly or indirectly indicates a country of manufacture that is untrue or misleading constitutes a false trade description under Section 2(1)(i)(I). Here State of Switzerland. The impugned mark, combining the white cross on a red background and the words “SWISS MILITARY“, creates an indirect trade description that the goods originate from Switzerland, whereas they are manufactured in China. This renders the mark non-registrable under Section 9(2)(a) as it is of such nature as to deceive or cause confusion.
2. Rejection of Court’ Order
The Court rejected the Deputy Registrar’s finding that the differences in the cross’s arms and rounded corners distinguished the marks, noting that such minutiae are unlikely to be noticed by an average consumer. The presence of the words “SWISS MILITARY” below the cross reinforces the impression of Swiss origin, increasing the likelihood of confusion.
3. Section 9(1)(b)
Regarding Section 9(1)(b), the Court held that this provision prohibits registration of marks which consist exclusively of indications designating geographical origin. The impugned mark, being composite and accompanied by disclaimers, does not exclusively designate geographical origin and thus does not violate Section 9(1)(b).
4. Section 11(3) and 11(5)
On Section 11(3)(a), the Court interpreted “any law” narrowly to mean laws concerning intellectual property rights in India, such as passing off and copyright law. Foreign laws, including the Geneva Conventions Act and the Paris Convention, do not have direct enforceability in India absent domestic legislation. Moreover, Section 11(5) requires the proprietor of an earlier trademark to raise objections under Section 11(3), which the appellant is not.
5. Analysis of Registrar’s Order and Court’s Decision
The Court held that the Registrar and Deputy Registrar are confined to considering grounds within the Trade Marks Act and cannot refuse registration based on external statutes unrelated to intellectual property rights.
The Court found the appellant’s allegation of a fabricated invoice using the new Rupee “₹” symbol before its official adoption to be significant but declined to make it determinative, as the issue was raised late and Respondent 2 was not given an opportunity to rebut it below.
The Court rejected the appellant’s reliance on the manner of use and promotional materials under Section 144, holding that such evidence is relevant only to infringement or passing off disputes, not to registration on a “proposed to be used” basis.
Finally, the Court held that registration of the impugned mark without limitation of colour is unsustainable because registration in black and white is deemed to cover all colours, including red. Since the mark in red and white causes confusion and false trade description, the registration cannot be upheld.
Our Comment:
This is till date the first case on Section 12 of Geneva Convention Act, 1960.
Analogy can be drawn regarding misuse of names and logos protected under Names and Emblems (Prevention of Improper Use), 1950, where Ashoke Chakra is also protected.
Source: Delhi High Court, Calcutta High Court, Trademark Litigation, Advocate Swarupa Ghosh