Full Judgment Text
Neutral Citation Number : 2023/DHC/000019
$~ (Original)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
th
Reserved on 14 December 2022
th
Pronounced on 4 January 2023
+ C.A.(COMM.IPD-TM) 158/2022, I.A. 20094/2022, I.A.
20095/2022 and I.A. 20096/2022
ARMASUISSE ..... Appellant
Through: Mr. Pravin Anand, Mr.
Shrawan Chopra, Ms. Madhu Rewari, Mr.
Vibhav Mittal, Ms. Shree Mishra, Mr.
Achyut Tewari, Advs.
versus
THE TRADE MARK REGISTRY & ANR. ..... Respondents
Through: Mr. Akhil Sibal, Sr. Adv. with
Mr. Anirudh Bakhru, Mr. S.K.Bansal, Mr.
Rishi Bansal, Mr. Ajay Amitabh Suman, Mr.
Anmol Kakkar, Mr. Aditya Rajesh, Ms.
Aishwarya, Ms.Asavari, Ms. Sanya and Ms.
Tejaswini Chandrashekar, Advs. for R-2
+ C.A.(COMM.IPD-TM) 159/2022, I.A. 20153/2022, I.A.
20154/2022 and I.A. 20155/2022
ARMASUISSE ..... Appellant
Through: Mr. Pravin Anand, Mr.
Shrawan Chopra, Ms. Madhu Rewari, Mr.
Vibhav Mittal, Ms. Shree Mishra, Mr.
Achyut Tewari, Advs.
Versus
THE TRADE MARKS REGISTRY & ANR..... Respondents
Through: Mr. Akhil Sibal, Sr. Adv. with
Mr. Anirudh Bakhru, Mr. S.K.Bansal, Mr.
Rishi Bansal, Mr. Ajay Amitabh Suman, Mr.
Anmol Kakkar, Mr. Aditya Rajesh, Ms.
Aishwarya, Ms.Asavari, Ms. Sanya and Ms.
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 1 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
Tejaswini Chandrashekar, Advs. for R-2
CORAM:
HON‟BLE MR. JUSTICE C. HARI SHANKAR
% J U D G M E N T
04.01.2023
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
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 2 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
th
dated 25 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.
th
5. Inasmuch as the impugned order dated 25 July 2022, read with
1
Section 10(2) 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,
1
10. Limitation as to colour . –
*
(2) So far as a trade mark is registered without limitation of colour, it shall be deemed to be
registered for all colours.
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 3 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
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 as well.
9. I agree with Mr Anand. Respondent 2, in making the above
concession and seeking a closure to these proceedings on that basis, is
being less than fair. Mr Sibal, with characteristic candour,
acknowledged that, despite having offered the concession on
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 4 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
instructions, his client was not going to desist from continuing to use
the red-and-white
mark, or the ‗ SWISS MILITARY ‘ appellation
below it, as it had subsisting registrations in that regard, which have
not been challenged. In that view of the matter, I see no justification
for truncating these proceedings on the basis of the concession
extended by Mr Sibal.
10. Had the impugned order restricted the grant of registration to
the impugned mark to the white cross on a black background, i.e.
,
then, perhaps, the appellant might not have been entitled to challenge
the use of the
mark in these proceedings, as the challenge would
have travelled outside the scope of the impugned order, and would
have assailed an entitlement that the impugned order did not grant. As
1
things stand, however, by virtue of Section 10(2) of the Trade Marks
Act, the impugned order permits the use, by Respondent 2, of the
white cross on a background of any colour (which would include red).
Respondent 2 avowedly uses, and intends to continue to use, the white
cross on the red background, as
, with the appellation ― SWISS
MILITARY ‖ below it. The appellant cannot, therefore, in these
proceedings, be foreclosed the right to challenge the entitlement, to
registration, of the
or the ― SWISS MILITARY ‖ marks, used
either independently or in conjunction with each other.
11. Mr. Sibal‘s submission that, if Mr. Anand‘s submissions were
to be accepted, the sequitur would only be limiting the grant of
registration to the impugned mark to a black and white combination,
in my opinion, is bereft of substance. It has merely to be stated to be
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 5 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
rejected. The impugned order allows registration of the impugned
mark without limitation of colour. This Court is seized with the
correctness of the impugned order. Its brief is not, therefore, limited
or restricted to modifying the impugned order in a manner it deems
appropriate – though, undoubtedly, as an appellate Court, it can do so.
The Court is well within its jurisdiction, therefore, to adjudicate on
whether Respondent 1 can be permitted registration, of the impugned
mark, in any colour, not merely in black-and-white. Inasmuch as the
1
impugned order, read with Section 10(2) , deems the impugned mark
to be registered in all colours, the concession advanced by Mr Sibal, to
the effect that his client is willing to let the impugned registration be
limited to black-and-white, does not in any way render the discussion
academic, especially in view of Mr Sibal‘s admission that his client
has no intention to restrict use of the impugned mark to the black-and-
white format, as it has subsisting registrations specifically for the red-
and-white format which are not under challenge.
12. I queried of Mr. Anand as to whether the appellant was also
objecting to the use, by the respondents, of
, i.e. where the white
cross was on a black background. Mr. Anand responded by
submitting that if the respondents were willing to forgo the words
‗ SWISS MILITARY ‘ below the logo and were merely using the
white cross on a black background, i.e.
, his client would have no
objection to such use.
13. Mr. Sibal, needless to say, was not willing to restrict the
impugned registration to a white cross on a black background without
the words ―SWISS MILITARY‖.
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 6 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
14. The battle lines thus stand drawn.
15. I would, therefore, be examining only whether the
mark,
depicting a white cross on a red background , and the ‗ SWISS
MILITARY ‘ word mark, individually or in conjunction with each
other, can be registered.
16. There being no dispute on facts, and the issue in controversy
being the entitlement of the trademarks ‗ SWISS MILITARY ‘ and
to registration, one may proceed directly to the rival submissions
made by learned Counsel before me.
CA(COMM.IPD-TM) 159/2022
Submissions of Mr. Pravin Anand on behalf of the appellant
Armasuisse
17. Mr. Pravin Anand, learned Counsel for the appellant initially
addressed arguments on CA(COMM.IPD-TM) 159/2022, which was
directed against the order which rejected the appellant‘s opposition
and allowed registration of the trademark
by Respondent 2.
th
18. Respondent 2 applied, on 8 November 2000, for registration of
the
mark for textile on a ―proposed to be used‖ basis. While so
applying, Promoshirt disclaimed exclusivity in the words ‗ SWISS
MILITARY ‘.
19. The appellant‘s opposition to the mark, as already noted, stands
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 7 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
th
rejected by the impugned order dated 25 July 2022.
Statutory proscriptions
20. Mr. Anand submits that the impugned logo of Promoshirt
cannot be registered in view of the proscriptions contained in Sections
2 3
of Section 2(1)(i)(I) and 2(1)(i)(IV)(a) read with Sections 102 and
4 5 6 7
103 , 9(1)(a) and (b) , Section 9(2)(a) and Section 11(3)(a) of the
2
2. Definitions and interpretation . –
(1) In this Act, unless the context otherwise requires, -
*
(i) ―false trade description‖ means –
(I) a trade description which is untrue or misleading in a material respect
as regards the goods or services to which it is applied; or
(IV) any marks or arrangement or combination thereof when applied –
(a) to goods in such a manner as to be likely to lead persons to
believe that the goods are the manufacture or merchandise of some
person other than the person whose merchandise or manufacture they
really are;
3
102. Falsifying and falsely applying trade marks . –
(1) A person shall be deemed to falsify a trade mark who, either, -
*
(b) falsifies any genuine trade mark, whether by alteration, addition, effacement or
otherwise.
(2) A person shall be deemed to falsely apply to goods or services a trade mark who, without
the assent of the proprietor of the trade mark, -
(a) applies such trade mark or a deceptively similar mark to goods or services or
any package containing goods;
(b) uses any package bearing a mark which is identical with or deceptively similar
to the trade mark of such proprietor, for the purpose of packing, filling or wrapping
therein any goods other than the genuine goods of the proprietor of the trade mark.
4
103. Penalty for applying false trade marks, trade descriptions, etc . – Any person who –
*
(d) applies any false trade description to goods or services; or
*
(g) causes any of the things above mentioned in this section to be done,
shall, unless he proves that he acted, without intent to defraud, be punishable with
imprisonment for a term which shall not be less than six months but which may extend to
three years and with fine which shall not be less than fifty thousand rupees but which may
extend to two lakh rupees:
Provided that the court may, for adequate and special reasons to be mentioned in the judgment,
impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty
thousand rupees.
5
9. Absolute grounds for refusal of registration . –
(1) The trade marks –
(a) which are devoid of any distinctive character, that is to say, not capable of
distinguishing the goods or services of one person from those of another person;
(b) which consist exclusively of marks or indications which may serve in trade to
designate the kind, quality, quantity, intended purpose, values, geographical origin or the
time of production of the goods or rendering of the service or other characteristics of the
goods or service;
*
shall not be registered.
6
9. Absolute grounds for refusal of registration. –
(2) A mark shall not be registered as a trade mark if –
(a) it is of such nature as to deceive the public or cause confusion;
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 8 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
Trade Marks Act.
2
Sections 2(1)(i)(I) and 2(1)(i)(IV)(a) of the Trade Marks Act
21. Mr. Anand contends, firstly, that the impugned mark is a ―false
trade description‖ within the meaning of Section 2(1)(i)(I) and Section
1
2(1)(i)(IV)(a) of the Trade Marks Act and was not, therefore,
registrable. He has invited my attention, in this context, to para 26 of
the notice of opposition filed by the appellant to Promoshirt‘s
application for registration of the impugned mark, which reads thus:
―26. The registration of the impugned mark would amount to
"false trade description" as per the provisions of Section 2(i)(I) and
Section 2(i)(IV)(a) and hence cause irreparable damage and
hardship in the related business and to the public at large.‖
Mr. Anand points out, on the basis of the invoices submitted by
Respondent 2 with its application for registration, that the goods in
respect of which Respondent 2 was using the impugned mark were
manufactured in China, not in Switzerland and that, therefore, by
using the appellation ‗ SWISS MILITARY ‘ and the distinctive red
cross which constitutes Switzerland‘s insignia, Respondent 2 was
seeking to make it appear that goods were of Swiss origin which
amounted to a ―false trade description‖.
22. In this context, Mr. Pravin Anand also drew my attention to Tax
th
Invoice dated 12 July 2008, issued by Swiss Military Products SA
(as Respondent 2 was earlier named) to Bausch & Lomb India Ltd, in
7
11. Relative grounds for refusal of registration . –
*
(3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be
prevented –
(a) by virtue of any law in particular the law of passing off protecting an
unregistered trade mark used in the course of trade;
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 9 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
respect of a laptop shoulder bag, bearing the impugned mark, albeit in
the form of a white cross on a red background, in which the amount
chargeable was reflected as ₹ 1,11,112.50. Mr. Anand submits that
th
₹
the symbol for the Rupee came into force only on 15 July 2010,
which was more than two years after the aforesaid invoice was issued,
th
for which purpose he placed reliance on a Cabinet Circular dated 15
July 2010 released by the Press Information Bureau, Government of
India, approving, on that day, the symbol ‗₹‘ for the Indian rupee.
Having, therefore, furnished a fabricated invoice in support of its
application, Promoshirt was, according to Mr. Pravin Anand, ex facie
disentitled to registration. Mr. Anand points out that there is no
finding in the impugned order on this objection by the appellant.
23. Mr. Anand next submits that there is yet another aspect on
which the application of the respondents for registration compromises
on truth. He refers me to the record of Registration No. A-
th
71091/2005 dated 29 April 2005, whereby copyright registration was
granted by the copyright office of the Government of India to the
artistic work
. He pointed out that, in the application for
registration, the applicant was shown to be Mr Jean Luk Boegli, of
Indian nationality , c/o Ashok Sawhney, W-41, Okhla Industrial Area,
Phase II, New Delhi. Mr. Jean Luk Boegli was also shown, in the said
application, to be the author of the copyright; again, of Indian
nationality. The form also disclosed that the first publication of the
impugned mark was in 1989 in India and that the publisher was also
of Indian nationality. The date on which the application for copyright
th
registration was made was reflected as 17 March 2004.
24. Mr. Anand has drawn my attention to an official Certificate
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 10 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
th
dated 19 July 2006, on the reverse side of a Power of Attorney
granted by Mr. Jean Luk Boegli in favour of Ashok Sawhney, CEO of
Respondent 2, in which the date of birth of Mr. Jean Luk Boegli is
th
reflected as 16 July 1976. By that reckoning, submits Mr. Pravin
Anand, Mr. Jean Luk Boegli, in 1989, would have been 13 years of
age. He submits that it is inconceivable that a 13 year old boy would
create the
logo. Accordingly, he submits that the Respondent 2
has resorted to misrepresentation even while seeking copyright
registration for the impugned logo.
25. Mr. Anand next referred me to various avertisements and trade
promotion catalogues, etc., in which Promoshirt was promoting the
impugned
brand. Mr. Anand points out that there were various
representations in the said advertisements/promotional campaigns
intended at communicating a link between goods bearing the
brand and Switzerland. In one of the advertisements, the Swiss flag
was shown with the Alps in the background. In another
advertisement, the following recital was to be found:
―Our motto of ‗Swiss quality at Affordable Prices‘ stems from the
fact that the Corporate Gift segment today suffers from either
inferior quality or exhorbitant prices. This is the gap we intend to
fill in with a mission to produce the best products available with
the most economically viable resources‖
The ―India catalogue‖ for various goods such as travel gear, watches,
writing instruments, sunglasses, accessories, bicycles, electronics,
alarm clocks, etc., brought out by Respondent 2, also shows a train in
a foreground with the snowclad Alps in the background. All this
material, through which Respondent 2 promoted and advertised its
brand, submits Mr Anand, was intended to convey the immediate
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 11 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
impression that the goods bearing the brand were of Swiss origin. Mr
8
Anand relies on Section 144 of the Trade Marks Act to submit that
the manner in which Respondent 2 was using the mark was relevant to
a decision on whether to allow, or not to allow, its registration. He
places reliance, for this purpose, on the decision of a coordinate Single
9
Bench of this Court in Louis Vuitton Malletier v. Manoj Khurana .
26. Invariably, submits Mr. Anand, Respondent 2 uses the
impugned logo with the white cross on a red background. He has also
shown me pictures of bag packs with the said logo and even produced,
in the Court, a physical sample of such a bag pack. A photograph of
one such bag pack may be provided thus:
5
Section 9(1)(b) of the Trade Marks Act
27. The use of the Swiss
insignia, along with the words
‗ SWISS MILITARY ‘, submits Mr Anand, would serve in trade to
designate the goods as being of Swiss geographical origin. The mark
5
is, therefore, ex facie non registrable under Section 9(1)(b) , which
8
144. Trade usages, etc., to be taken into consideration . – In any proceeding relating to a trade mark,
the Registrar or the High Court, as the case may be, shall admit evidence of the usages of the trade concerned
and of any relevant trade mark or trade name or get up legitimately used by other persons.
9
(2015) 64 PTC 559
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 12 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
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‖.
28. Mr Anand has, in this context, also relied on the Manual of
Trade Marks Practice and Procedure by the Ministry of Commerce
and Industries which contains the guidelines followed by the Registry
in the matter of registration of trade marks. The following guidelines,
to be found with respect to registration of trade marks which indicate
the geographical origin of the goods, are cited:
― ― Geographical origin”
Name of places with populations of less than 5000 in India prima
facie be acceptable. However if the location covers a large area
having a reputation in the goods or service, the application may
attract objections.
– In the case of overseas names, location is considered more
important than size.
– In the case of Industrialised countries such as USA, Japan or
Europe, while population size of 100,000 for reasonable for
acceptability, it is to be borne in mind if the location has a
reputation or services, the size of the location of its remoteness
will not help acceptability of the geographical name as a
trademark.
*
Geographical names used fancifully
Geographical names, used in a fanciful manner such as NORTH
POLE or MOUNT EVEREST for banana, which are not likely to
be indicating the origin of the goods, can be accepted.
Names of rivers, seas and deserts etc.
*
Where the geographical location covers a large area (even if
sparsely populated) and/or reputation in the goods, the application
will face an objection.
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 13 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
*
Names of suburbs of big cities
In India many suburbs of Mumbai such as Andheri, Borivali or
Bhendi Bazar etc., are as large and well-known as many towns.
They should be considered as a town per se with comparable
population figures. In the case of an application to register the
name of district of Mumbai, Examiners should consider whether
the name is likely to be seen as fanciful use of the name or as a
plausible indication of geographical origin.‖
Mr. Anand submits that, as Switzerland is a large country with a
population of almost 1 crore, the word ―Swiss‖ is unregisterable as a
trade mark under the Trade Marks Act. He has placed reliance, in this
context, on the decision of the High Court of Calcutta in Imperial
10
Tobacco of India v Registrar of Trademarks , which holds ―Simla‖
to be unregisterable as a trade mark.
6
Section 9(2)(a) of the Trade Marks Act
6
29. Section 9(2)(a) , submits Mr. Anand, is also breached by the
impugned mark, as the use of the impugned mark would deceive and
confuse the public into believing that the goods bearing the impugned
mark are of Swiss origin or bear an association with the Swiss Army
or Switzerland, whereas, in fact, the goods are of Chinese origin and
have no connection with Switzerland whatsoever. Likelihood of
confusion or deception would suffice to attract this clause, submits
Mr. Anand; actual confusion or deception need not be shown.
Distinguishing between ―confusion‖ and ―deception‖, Mr. Anand
submits that if the customer is in a stage of wonderment as to the
existence of a connection, it indicates ―confusion‖, whereas, if he,
acting on the basis of the confused impression that is conveyed,
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 14 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
proceeds to make a purchase, he is ―deceived‖. He cites, for this
purpose, para 6 of the report in Shree Nath Heritage Liquor Pvt Ltd
11
v. Allied Blender & Distillers Pvt Ltd and Allied Blenders and
12
Distillers Pvt. Ltd. v. Sentino Bio Products Pvt. Ltd. and the
decision of the House of Lords in Parker-Knoll Ltd. v. Knoll
13
International Ltd. . Likelihood of confusion, submits Mr. Anand,
14
relying on Laxmikant V. Patel v. Chetanbhai Shah , is all that is
required to disentitle the mark to registration; not actual confusion. In
this context, Mr. Anand submits that the onus is always on the
applicant seeking registration of its mark to establish the existence of a
geographical connect between the goods on which the mark is used
and the location to which the mark adverts, for which he relies on para
15
6 of Amritdhara Pharmacy v Satya Deo Gupta and In Re Dunn's
16
Trade-marks. .
30. On the aspect of likelihood of confusion or deception, paras 27
to 29 of the impugned order read thus:
―27. Now, if we see the impugned trademark in the Indian
context, the defense forces in India – be it – the army or military,
air force or navy, all are held in high respect as performing the
sovereign function to protect and defend the territorial sovereignty
and integrity of the country. They are never regarded as entities
involved in commercial activities and doing trade or business in
the impugned goods i.e. textile items,and for the purpose having or
using trade or business marks. Therefore, to my mind, the adoption
of the impugned trademark by the applicant in India in respect of
the impugned goods is only arbitrary and fanciful and can’t be
said to be non-distinctive or descriptive of geographical origin of
goods or termed as a false trade description or amounting to false
swiss designation or said to be malafide with a view to confuse or
mislead the consumers in India to think that the impugned goods
10
AIR 1977 Cal 413
11
221 (2015) DLT 359 (DB) : (2015) 63 PTC 551 (DB)
12
2014 SCC OnLine Del 3423
13
1962 RPC 265
14
(2002) 3 SCC 65
15
(1963) 2 SCR 484
16
[L.R.] 41 Ch.D. 439
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 15 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
originate from the opponent or from the Swiss military or from
Switzwerland and thereby causing confusion and/or deception
amongst the consumers and tricking them to buy those goods. To
my mind, the impugned trademark is fairly capable of
distinguishing the applicant‘s goods from those of others including
the opponent in India. The contentions of the opponent to the
contrary are accordingly rejected.
28. Further, given the fact that there is no cogent evidence by
the opponent on record to show any use of SWISS MILITARY as a
trademark in the course of trade in India in respect of the
impugned goods or in respect of goods of the same description or
in respect of any, allied or cognate goods, or to show .any
reputation or goodwill enjoyed by SWISS MILITARY as a
trademark in the course of trade of any such goods in India or of
any transborder reputation therein trickling or being recognized in
India in respect of any goods, the adoption of the impugned
trademark by the applicant in India can’t be said to be malafide or
in bad faith done to usurp any reputation or goodwill of the
opponent or of the swiss defense forces in the trademark SWISS
MILITARY or to pass off its goods as those originating or coming
from the opponent or from the Swiss military or from Switzerland.
29. Thus, the adoption of the impugned trademarks by the
applicant in India seems fairly honest and independent of the
opponent or of any goodwill or reputation of the opponent or of the
Swiss defense forces including the Swiss military in respect of
SWISS MILITARY as a trademark or as Swiss designation.‖
(Emphasis supplied)
Mr. Anand submits that the finding of the learned Deputy Registrar,
that people would not assume, from the impugned mark, that the
goods on which the mark was affixed were of Swiss Origin, was no
more than his ipse dixit . No basis for the finding is forthcoming in the
impugned order.
Section 11(3)(a) of the Trade Marks Act read with the Geneva
Conventions Act, 1960, the (Swiss) Federal Act on the Protection of
Trade Marks and Indications of Source, the (Swiss) Ordinance On The
Register Of Appellations Of Origin and Geographical Indications for
Non-Agricultural Products Regulations and the Paris Convention for
the protection of the Industrial Property
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 16 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
31. Mr. Anand next trains his sights on Section 11(3)(a) of the
Trade Marks Act, juxtaposed with various other statutory provisions,
Indian as well as foreign.
32. At this juncture itself, I deem it appropriate to observe that the
words ―by virtue of any law‖, employed in Section 11(3)(a),
howsoever widely construed, cannot embrace laws enacted in foreign
jurisdictions, which have not been made specifically enforceable in
India in a manner known to law. The expression ―any law‖ has,
therefore, to be understood as referring to laws in force in India, and
not laws in force anywhere in the world. Else, the learned Deputy
Registrar would have to conduct global checks of all laws in force
across the world before registering a mark. That, quite obviously,
cannot be the intent of Section 11(3)(a).
33. I do not, therefore, intend to refer to the the (Swiss) Federal Act
on the Protection of Trade Marks and Indications of Source, the
(Swiss) Ordinance On The Register Of Appellations Of Origin and
Geographical Indications for Non-Agricultural Products Regulations,
which are laws in force in Switzerland with no extra-territorial
application extending to India.
34. Section 11(3)(a) of the Trade Marks Act prohibits registration
of a trademark if its use in India is 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‖. The words ―any law‖ submits
Mr. Anand are compendious and all-embracing and would, in his
submissions, cover not only domestic but also international law. He
seeks to substantiate his allegation that the registration of the
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 17 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
impugned mark would infract Section 11(3)(a) as under:
(i) Mr. Anand first draws my attention to the Geneva
17
Conventions Act, 1960, particularly Sections 12(d) and 12(e)
thereof. These provision, he submits, clearly prohibit use of the
red and white cross, being the heraldic emblem of Switzerland,
by any person for any purpose. He submits that the impugned
order has dismissed this contention by merely observing that, in
the application submitted by Respondent 2, the mark was in the
form of a white cross on a black background, and not a white
cross on a red background. Mr. Anand submits that the
impugned order, thereby, ignores the actual mark which was
being used by Respondent 2.
th
(ii) In this context, Mr. Anand invites my attention to the 13
Lok Sabha debates at the time of tabling of the Trade Marks
th
Bill 1999. The 13 Loksabha Debates, with respect to Clause
11(3)(a) of the Trade Marks Bill, which was later enacted as
Section 11(3)(a) in the Trade Marks Act, recommended as
under:
―Regarding the clause 11(3)(a) providing for a relative
ground of refusal of registration by virtue of law of
copyright should be further elaborated so as to protect
India‘s commitments under the Universal and the Berne
Copyright Conventions as endorsed by Parliament in the
International Copyright Order 1991 as also its obligations
under the TRIPS Agreement of the GATT.‖
(Emphasis supplied)
17
12. Prohibition of use of Red Cross and other emblems. – No person shall, without the approval of
the Central Government, use for any purpose whatsoever –
*
(d) the emblem of a white or silver cross with vertical and horizontal arms of the same length
on, and completely surrounded by, a red ground, being the heraldic emblem of the Swiss
Confederation; or
(e) any design or wording so nearly resembling any of the emblems or designations specified
in the preceding clauses of this section so as to be capable of being mistaken for, or, as the case may
be, understood as referring to, one of those emblems.
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 18 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
The binding nature of India commitements under the Universal
and the Berne Copyright Convention was, therefore, submits
Mr. Anand, recognized even in the Lok Sabha debates which
preceded the enactment of the Trade Marks Act in 1999.
ter18
(iii) Mr. Anand next refers to Clause (1)(a) in Article 6 of
the Paris Convention for the Protection of the Industrial
Property (herein after ―the Paris Convention‖), which, he
submits, is binding on India, as India was a member country of
the Convention. The impugned mark, points out Mr. Anand,
ter
clearly violates Article 6 (1)(a) of the Paris Convention, as it
represents the flag of the Swiss Confederation.
(iv) To buttress these contentions, Mr. Anand also invokes
19
Section 57(8) of the Indian Evidence Act, 1872 (―the
Evidence Act‖), which requires Courts to take judicial notice of
the national flag or States or Sovereigns recognized by the
Government of India.
35. Mr. Anand submits that the impugned order does not deal with
the submissions of the appellant at all. Paras 30 to 47 of the impugned
order, which address these submissions, read thus:
“ 30. The opponent has vehemently pressed that the impugned
trademark is prohibited under Article 6ter and l0bis the Paris of
18
( 1)(a) The countries of the Union agree to refuse or to invalidate the registration, and to prohibit by
appropriate measures the use, without authorization by the competent authorities, either as trademarks or as
elements of trademarks, of armorial bearings, flags, and other State emblems, of the countries of the Union,
official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a
heraldic point of view.
19
57. Facts of which Court must take judicial notice . – The Court shall take judicial notice of the
following facts:
*
(8) The existence, title, and national flag of every State or Sovereign recognized by the
Government of India:
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 19 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
Convention for Protection of Industrial Property. Additionally, the
Ld. Counsel for the opponent has, during the hearing, contended
that the impugned trademark is barred by the provisions of Article
22.
31. At the outset, it is to be borne in mind that India is a
sovereign country governed by its own laws. The registration of
trademerks in India is governed by the Trade Marks Act, 1999 and
rules framed thereunder. Therefore, the validity and entitlement of
the impugned trademark for registration is to be tried and tested in
accordance with the provisions of the Trade Marks Act and rules.
32. The Trade Marks Act and rules do not provide for any
objection to any application for registration af a trademark on
ground that it violates the provisions of the Paris Convention or
TRIPS. However, as an obligation of the Country towards
international conventions. I deem it fit to consider the said
objection raised by the opponent.
*
35. Further, the registration and protection of geographical
indication in India is governed by the Geographical Indications
(Registration and Protection) Act, 1999 and rules framed
thereunder. Any geographical indications to have statutory
protection from unauthorized use are to be registered under the GI
law of India.
36. As already stated earlier, India is a sovereign country
governed by its own laws. Even it is accepted for a moment that
the impugned mark is a Swiss appellation/geographical indication
under Swiss laws, the same is of no effect as the Swiss laws have
no force and applicability within India and from my personal
knowledge SWISS MILITARY is not registered as a geographical
indication in India under the provisions of the Geographical
Indication (Registration and Protection) Act, 2002.
37. Thus, Article 22 of the TRIPS relating to protection of
geographical indication has no applicability to the present matter.
The contention of the opponent is accordingly rejected.
38. Further, given that SWISS MILITARY is not a registered
geographical indication in India, I also reject the contention of the
opponent that the impugned trademark amounts to falsely applying
the trademark involving a wrongful indication of
source/appellation/geographical indication, therefore, barred by the
provisions of Sections 102, 103 of the Trade Marks Act, 1999.
ter
39. Now, Article 6 of the Paris Convention contains
prohibitions concerning use, without authorization by the
competent authorities, either as a trademark or as elements of
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 20 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
trademarks, of armorial bearing, flags, and other State emblems, of
the countries of the Union, official signs and hallmarks indicating
control and warranty adopted by them, and any imitation from a
heraldic point of view.
40. The opponent contends that the Swiss emblem of Swiss
Cross comprising of a white cross with vertical and horizontal arms
of the same length on, and completely surrounded by, a red ground,
is a heraldic emblem of the Swiss confederation. The impugned
trademark comprising white cross on a black background is
identical/substantially similar to/slavish imitation of the said Swiss
ter
emblem, therefore, prohibited under Article 6 of the Paris
Convention.
41. In order to appreciate the above contention raised by the
opponent, the Swiss emblem and the impugned trademark are
reproduced as under –
42. As could be seen, the Swiss emblem of Swiss Cross
comprises of a white cross completely surounded by a red ground
in square shape. The vertical and horizontal arms of the cross are of
the same length and width. On the other hand, the impugned
trademark is a composite label in black and white color scheme. It
comprises of a device of white cross surrounded by a black ground
in square shape with rounded corners and underneath the word
SWISS followed by the word MILITARY below it as prominent
and essential feature of the mark. The vertical and horizontal arms
of the cross used in the impugned trademark do not appear to be of
the same length and width. Even if one compares the device of
cross in the impugned trademark with the Cross in the Swis
emblem, the Swiss Cross has a particular symmetry and colour
scheme which is completely different from the device of cross in
the impugned trademark which is white in colour surrounded by
black ground in square shape with rounded corners. Thus, not only
after thoughtful consideration and comparison of two marks as a
whole but also in the first impression, the two marks appear
different from each other. The Ld. Consel for the opponent has
argued that in case the impugned trademarks in registered in black
and white, as per section 10 of the Trade Marks Act, 1999, it would
be deemed to be registered for all colors, therefore, color of the
impugned trademark is not of much significance for the purpose of
comparison of the marks. I do agree with the Ld. Counsel for the
opponent to the extent he says that as per section 10, a mark if
registered in black and white colour would be deemed to be
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 21 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
registered for all colors, however, it doesn‘t naturally follow from
this that the mark would be deemed to be registered in every
possible color scheme/combination of colors including the color
scheme/combination of colors of the Swiss emblem. Thus, to my
mind, the contention of the opponent that the impugned trademark
comprising white cross on a black background is
identical/substantially similar to/slavish imitation of the Swiss
emblem of Swiss Cross, therefore, prohibited under Article 6ter of
the Paris Convention doesn‘t hold good and is liable to be rejected.
*
45. Another contention of the opponent as argued by the Ld.
Counsel is that the registration of the impugned trademark is barred
by the provisions of Section 12(a), (d) and (e) of the Geneva
Conventions Act, 1960, respectively, prohibiting use of Red Cross
or Geneva Cross, the Swiss emblems as well as any design or
wording so nearly resembling to said designations or emblem as to
be capable of being mistaken for or as referring to them.
46. In order to appreciate the above contention raised by the
opponent, the Swiss emblem, the Red Cross or the Geneva Cross
and the impugned trademark are reproduced herein below –
47. Having already held that the impugned trademark is
different from the Swiss emblem of the Swiss Cross, for the same
reasons, I hold that the impugned trademark as a whole as well as
the device of white cross on black ground therein even separately,
are different from the ‗RED CROSS‘ or ‗GENEVA CROSS‘.
Therefore, the provisions of Section 12(a), (d) and (e) of the
Geneva Conventions Act, 1960 have no applicability in the present
matter.‖
Mr. Anand submits that these findings are totally unsustainable in
law, for the reasons already cited supra .
Submissions of Mr. Akhil Sibal on behalf of Respondent 2
36. Responding to the submissions of Mr. Anand, Mr. Sibal
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 22 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
submits that the respondent is the prior user of the impugned mark
and is using the mark since 1989, continuously. As against this, it is
pointed out that the appellant has no registered trademark, similar to
the impugned article, in India. All applications of the appellant, for
registration of the ‗ SWISS MILITARY ‘ marks, it is pointed out, are
on ―proposed to be used‖ basis, and are pending with the Registry of
Trade Marks. Besides, points out Mr. Sibal, all applications,
including the international application filed by the appellant, have
been filed after the registration of the impugned marks in favour of
Respondent 2 in India.
37. Mr. Sibal also advances a preliminary objection to the reliance,
by Mr. Anand, on promotional or advertising material to contend that
Respondent 2 was promoting its goods, bearing the impugned mark,
in such a fashion as to lure consumers into drawing an association
between the goods and Switzerland, by, for example, showing the
Swiss Alps in the background, or the Swiss flag in the foreground.
He submits that this Court is presently hearing an appeal against an
order allowing registration of the impugned mark and declining the
objections of the appellant against such registration. The manner in
which the marks are used, he submits, is not a factor which is
relevant in this regard. Registration of a mark, he submits, cannot be
allowed or refused depending on the manner in which the applicant
for registration is making use of the marks.
Re. Sections 2(1)(i)(I) and 2(1)(i)(IV)(a) of the Trade Marks Act
38. Mr. Sibal refutes the allegation of Mr. Anand that the
impugned mark amounts to a ―false trade description‖ within the
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 23 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
meaning of Section 2(1)(i)(I) of the Trade Marks Act. He also draws
attention, in this context, to the definition of ―trade description‖ as
20
contained in Section 2(1)(za)(iv) . In view of these definitions, Mr.
Sibal submits that the impugned mark, i.e.
, must inherently and
unequivocally indicate, to the customer, that the goods, on which the
mark figures, were made in Switzerland. The finding to the contrary,
in the impugned order is, he submits, unexceptionable. Even if the
impugned mark were to suggest some possible Swiss connection, he
submits that it does not indicate, in any manner, that the goods were
made in Switzerland. Inasmuch as Section 9 contains absolute
grounds for refusing registration, its provisions have to be strictly
construed. He submits that it would be unrealistic to presume that
the consuming public would, because of the use of the impugned
marks by Respondent 2, deem the goods, on which they are used, to
emanate from the Swiss defence forces. The aspect of ―false trade
description‖, he submits, has to be examined from the perspsective of
an Indian consumer of average intelligence. He echoes the
observation, in the impugned order, that defence forces, of any
country, are held in high esteem and respect and submits, therefore,
that the general public would never accept the fact that the armed
forces of Switzerland would be engaged in trading or business
activities. If Mr. Anand‘s submissions were to be accepted, Mr.
Sibal submits that marks such as ‗PETER ENGLAND‘ and
‗AMERICAN TOURISTER‘ would become unregisterable.
20
(za) ―trade description‖ means any description, statement or other indication, direct or indirect, -
*
(iv) as to the place or country in which or the time at which any goods or services were made,
produced or provided, as the case may be;
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 24 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
39. Besides, submits Mr. Sibal, the impugned mark could be
regarded as a ―false trade description‖ only if, inherently and per se ,
the mark, represented that the goods on that which it is affixed were
manufactured in Switzerland. No material to so suggest, he submits,
is forthcoming, especially apropos textiles, with respect to which
registration has been granted to the impugned mark.
40. Without prejudice, Mr. Sibal submits that there does, in fact,
exist a connect between the impugned mark and Switzerland, as (i)
Respondent 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 2 vide
th
assignment deed dated 13 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 2, were
manufactured in Switzerland.
41. In any case, submits Mr. Sibal, even if the impugned mark
were to amount to a ―false trade description‖, that does not constitute
a ground to refuse it registration either under Section 9 or Section 11.
The consequences of registration of a mark which is a false trade
4 21
description, he points out, are to be found in Sections 103 and 104
21
104. Penalty for selling goods or providing services to which false trade mark or false trade
description is applied. – Any person who sells, lets for hire or exposes for sale, or hires or has in his
possession for sale, goods or things, or provides or hires services, to which any false trade mark or false trade
description is applied or which, being required under Section 139 to have applied to them an indication of the
country or place in which they were made or produced or the name and address of the manufacturer, or
person for whom the goods are manufactured or services provided, as the case may be, are without the
indications so required, shall, unless he proves,—
(a) that, having taken all reasonable precautions against committing an offence against this
section, he had at the time of commission of the alleged offence no reason to suspect the
genuineness of the trade mark or trade description or that any offence had been committed in
respect of the goods or services; or
(b) that, on demand by or on behalf of the prosecutor, he gave all the information in his
power with respect to the person from whom he obtained such goods or things or services; or
(c) that otherwise he had acted innocently,
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 25 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
of the Trade Marks Act.
5
Re. Section 9(1)(b)
42. Mr. Sibal would contend that the appellant is estopped from
5
invoking Section 9(1)(b) , as it has itself applied for registration of
the word mark ‗ SWISS MILITARY ‘ and the device mark
5
. He submits that Section 9(1)(b) engrafts an absolute
proscription against registration, which is not dependent on the
identity of the applicant. He relies, for this purpose, on Indian
22
Hotels Co. Ltd v. Jiva Institute of Vedic Science & Culture .
43. On merits, Mr. Sibal emphasises the word ―exclusively‖,
5
figuring in Section 9(1)(b) . He submits that the proscription in
5
Section 9(1)(b) applies only to marks which ―consist exclusively of
marks or indications which may serve in trade‖ to designate the
geographical origin of the goods. The impugned mark, he submits,
does not consist exclusively of marks or indications whch designate
the geographical origin of the goods on which it is used, as it is a
composite mark with a black and white cross and the words ‗ SWISS
MILITARY ‘. He 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. The impugned order,
therefore, is correct in holding that they are fanciful when used in
relation to textiles. Additionally, as the grant of registration to the
be punishable with imprisonment for a term which shall not be less than six months but which may extend to
three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh
rupees
22
2008 SCC OnLine Del 1758 : (2008) 37 PTC 468 (DB)
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 26 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
impugned device mark
is subject to the disclaimer that no
exclusivity would be claimed in respect either of the black and white
cross or of the ‗ SWISS MILITARY ‘ phrase that figures below it,
Section 9(1)(b) would not apply.
44. In this context, Mr. Sibal also invites attention to Section
23
11(2)(a) of the Georgaphical Indications of Goods (Registration and
Protection) Act, 1999 (―the GI Act‖). The restraints and restrictions
to which Mr. Anand alludes, submits Mr. Sibal, would apply only to
an application for registration under Section 11(1) of the GI Act, and
not to an application under the Trade Marks Act.
th
45. Mr. Sibal also relies on an order dated 5 December 2019 of
the Higher Regional Court at Hamburg which holds that the cross-
shaped logo was not invariably associated with goods produced in
Switzerland. The test, he reiterates, has to be that of the perception
of the average consumer, who would not, by the mere use of the
impugned mark, be drawn to presume that the goods on which they
find place originated in Switzerland. Mr. Sibal also cites, in this
context, a judgement of the High Court of Gujarat in Sahkar Seeds
24
Corpn. v. Dharti Seeds which held the logo ‗Vadhiyar Bij‘ not to
23
11. Application for registration. –
(1) Any association of persons or producers or any organisation or authority established by or
under any law for the time being in force representing the interest of the producers of the concerned
goods, who are desirous of registering a geographical indication in relation to such goods shall
apply in writing to the Registrar in such form and in such manner and accompanied by such fees as
may be prescribed for the registration of the geographical indication.
(2) The application under sub-section (1) shall contain –
(a) a statement as to how the geographical indication serves to designate the goods
as originating from the concerned territory of the country or region or locality in the
country, as the case may be, in respect of specific quality, reputation or other
characteristics of which are due exclusively or essentially to the geographical
environment, with its inherent natural and human factors, and the production, processing
or preparation of which takes place in such territory, region or locality, as the case may
be;
24
2017 SCC OnLine Guj 2577
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 27 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
be misleading as Vadhiyar, as a geographical area in Gujarat, was not
known for the production of seeds (― Bij ‖ being the vernacular
equivalent of ―seeds‖).
6
Re. Section 9(2)(a)
6
46. Section 9(2)(a) , too, is not available to the appellant,
according to Mr. Sibal, as the appellant‘s own licensees are using the
marks ‗Wenger‘ (
)and ‗Swiss Gear‘ (
) with a
white cross on a red background (in relation to goods not
manufactured in Switzerland, but in China, Hong Kong, etc, for
which he has relied upon promotional material available on the
internet. From the same material, Mr. Sibal points out that Wenger
was taken over by the Victorinox group in 2005 and that Swiss Gear
was owned by Wenger. He has, in context, referred to the Affidavit
filed by the appellant before the learned Deputy Registrar of Trade
Marks in support of its opposition to the application of Respondent 2
in which it is affirmed that the Swiss Governmente and Victorinox
had concluded a licence agreement which allowed Victorinox to use
the trade marks ‗SWISS ARMY‘ or ‗SWISS MILITARY‘.
47. On merits, Mr. Sibal submits that Section 9(2)(a) would apply
only where the mark, by its very nature , is confusing or deceptive.
Given the principle of territoriality that attaches to trade marks – for
which he cites Toyota Jidosha Kabushiki Kaisa v. Prius Auto
25
Industries Ltd – Mr. Sibal contends that the likelihood of deception
or confusion has to be assessed on the basis of the inherent nature of
the mark; not its use, and has to be tested in the Indian context
25
(2018) 2 SCC 1
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 28 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
keeping in mind the class of consumers who would purchase the
goods in India. Indian consumers, submits Mr. Sibal, are unlikely to
be deceived or confused, merely by the use of the impugned mark,
that the goods on which they are affixed or found are manufactured
by the military establishment in Switzerland. The appellant, he
points out, has not cited any example of actual confusion having so
arisen. The impugned mark cannot, he submits, be compared, for
example, with a mark like ‗SWISS MADE‘, which would
unequivocally point to the goods having been made in Switzerland.
48. The findings, in the impugned order, on this issue, he submits
are not, therefore, perverse, as would justify interference by this
Court.
Re. Section 11(3)(a) – the Paris Convention, the Geneva Convention
and the Geneva Conventions Act, 1996
49. As in the case of Sections 9(1)(b) and 9(2)(a), the appellant,
argues Mr. Sibal, is also estopped from invoking Section 11(3)(a) of
the Trade Marks Act as, despite having any approval from the
Central Government, the appellant has itself applied for registration
of the red and white cross device.
50. Mr. Sibal fundamentally disagrees with Mr. Anand‘s
understanding of the phrase ―any law‖ in Section 11(3)(a) of the
Trade Marks Act. He submits that, contextually read, the words ―any
law‖ cannot be read as referring to any law in force in India, much
less any law in force anywhere in the world. He predicates this
argument on the following propositions:
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 29 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
(i) The words ―in particular the law of passing off
protecting an unregistered trade mark used in the course of
trade‖, as well as clause (b) of Section 11(3) which refers to
the ―law of copyright‖, clearly indicate that the ―law‖ that the
phrase ―any law‖ in Section 11(3)(a) encompasses must be a
law relating to intellectual property, or involving intellectual
property rights.
26
(ii) Section 11(3)(a) is subject to Section 11(5) . Section
11(5) ordains that a mark shall not be refused registration
under, inter alia , Section 11(3) unless an objection is raised in
opposition proceedings by the proprietor of the earlier trade
mark . Thus, the right to object under Section 11(3) is available
only to the proprietor of an earlier trade mark. The appellant
does not own any earlier trade mark. That apart, this
specification indicates that the words ―any law‖ employed in
Section 11(3)(a) relates to laws impacting proprietorial rights
in an earlier trade mark. They cannot, therefore, be read so
widely as to encompass statutes such as the Geneva
Convention Act, which has nothing whatsoever to do with
trade mark law.
(iii) The words ―any law‖ have to be read noscitur a sociis
with the law relating to passing off and ―copyright law‖. Mr.
Sibal relies, for this purpose, on Rohit Pulp & Paper Mills v.
27
Commissioner of Central Excise .
26
(5) A trade mark shall not be refused registration on the grounds specified in sub-sections (2) and (3),
unless objection on any one or more of those grounds is raised in opposition proceedings by the proprietor of
the earlier trade mark.
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 30 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
51. The Paris Convention, submits Mr. Sibal, has not been ratified
28
by way of any law enacted under Article 253 of the Constitution of
India; ergo, the petitioner cannot seek any relief on the basis thereof.
He relies, for this purpose, on the judgement of the Supreme Court in
29
Ashwani Kumar v. U.O.I. He also relies on the decision of U.S.
Court of Appeals in International Café S.A.L. v. Hard Rock Café
30
International Inc. which holds that the Paris Convention is not
self-executing in nature without domestic legislation through which it
can be implemented. To the same effect, he submits, is the decision
of the U.S. Court of Appeals in Empresa Cabana del Tabaco v.
31
Culbro Corporation , which was affirmed in I.T.C. Ltd v.
32 th
Punchgini Ltd . In fact, points out Mr. Sibal, though the 13 Lok
Sabha Debates advocated the elaboration of Clause 11(3)(a) of the
Trade Marks Bill, 1999, to protect India‘s commitments under
international conventions, this never happened.
52. Adverting next to the Geneva Convention and the Geneva
Convention Act, Mr. Sibal submits that, unlike the Emblems and
Names (Prevention of Improper Use) Act, 1950, which was
specifically incorporated by reference in the Trade Marks Act,
making marks which infracted the said Act non-registerable, no
equivalent provision with reference to the Geneva Conventions Act
was incorporated by the legislature. In the absence of any such
specific incorporation, he submits that a trade mark could not be
denied registration on the ground that grant thereof would violate the
27
(1990) 3 SCC 447
28
253. Legislation for giving effect to international agreements . – Notwithstanding anything in the
foregoing provisions of this Chapter, Parliament has power to make any law for the whole or any part of the
territory of India for implementing any treaty, agreement or convention with any other country or countries or
any decision made at any international conference, association or other body.
29
(2020) 13 SCC 585
30
252 F. 3d. 1274
31
399 F. 3d. 462
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 31 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
Geneva Conventions Act.
53. Section 12 of the Geneva Conventions Act, submits Mr. Sibal,
is, moreover, not directed towards use of trade marks in particular.
st
Article 53 of the 1 Geneva Convention, on the other hand,
specifically refers to use of trade marks; however, Article 53 has not
been made enforceable by the Geneva Conventions Act or by any
33
other statute. Mr. Sibal relies, in this context, on Sections 2(a) ,
34 35
3(1) and 3(3)(a) of the Geneva Conventions Act. Conjointly read,
he submits, it becomes clear that, of the various Articles in the Ist
Schedule to the Geneva Conventions Act, Article 50 alone has been
made enforceable. Article 53 is not, therefore, enforceable at law.
Adverting to Section 12, Mr. Sibal submits that the Section does not
incorporate an absolute prohibition, as use of the white-and-red cross
representing the Swiss insignia is permissible, albeit with the
approval of the Central Government.
54. Mr. Sibal next specifically addresses clauses (d) and (e) of
Section 12 of the Geneva Conventions Act. In his submission,
neither clause would, even on facts, apply. Section 12(d), he
submits, does not apply because (i) the trade mark of which the
32
482 F. 3d. 135
33
2. Definitions . – In this Act, unless the context otherwise requires, -
(a) ―Conventions‖ means the Conventions set out in the Schedules; and the First Convention,
the Second Convention, the Third Convention and the Fourth Convention mean the
Conventions set out in the First, Second, Third and Fourth Schedules, respectively;
34
3. Punishment of grave breaches of conventions . –
(1) If any person within or without India commits or attempts to commit, or abets or procures
the commission by any other person at, a grave breach of any of the Conventions he shall be
punished, -
(a) where the offence involves the wilful killing of a person protected by any of the
Conventions, with death or with imprisonment for life; and
(b) in any other case, with imprisonment for a term which may extend to fourteen
years.
35
(3) For the purposes of this section, -
(a) a grave breach of the First Convention is a breach of that Convention involving an act
referred to in Article 50 of that Convention committed against persons or property protected by that
Convention;
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 32 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
impugned order allows registration contains a white cross on a black
background, and not a red background and (ii) the arms of the cross
are not of equal length, as noted by the learned Deputy Registrar.
Section 12(e), he submits, applies only where the design is capable of
being mistaken for the heraldic Swiss red cross. The impugned trade
mark, in Mr. Sibal‘s submission, is not capable of being mistaken
with the heraldic emblem of the Swiss confederation, especially as it
is used with the words ‗SWISS MILITARY‘.
th
Order dated 7 April 2022 of the Cancellation Division of the
European Union Intellectual Property Office (EUIPO)
55. In fact, submits Mr. Sibal, all the grounds on which the
appellant seeks rectification of the Register in the present case by
removal of the impugned mark therefrom, were raised by the
appellant before the Cancellation Division of the EUIPO, and
th
discredited by the EUIPO vide order dated 7 April 2022, against
which the appellant has not appealed. The mark under challenge in
that case was ‗SWISS MILITARY by PSM‘, but the use of the words
―by PSM‖, he submits, would make no difference to the ratio of the
said decision. The appellant cannot, therefore, he submits, re-agitate
these issues all over again before this Court.
Re. Section 144 of the Trade Marks Act
8
56. The reference to ―trade usage‖ in Section 144 of the Trade
Marks Act, submits Mr. Sibal, is intended to ascertain whether,
owing to usage of the mark by other persons, it has become common
to the trade, generic or wanting in distinctiveness. The expression is
not intended to embrace the manner of usage of the mark by its
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 33 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
proprietor. No evidence of trade usage of the impugned mark in
India, he submits, has been provided by the appellant. The
judgements, on which Mr. Anand relies in this context, he submits,
were rendered in the context of infringement claims, or relative
grounds for refusal of registration, and not in the context of the
absolute grounds envisaged by Section 9. Besides, as the application
of Respondent 1 was on a ―proposed to be used‖ basis, prior usage
became irrelevant.
Re. allegation of fabrication of invoices
57. Mr. Sibal, closing his submissions, addressed the allegation of
Mr. Anand that Respondent 2 had relied on a fabricated invoice in
support of its application seeking registration of the impugned mark.
He points out that the allegation is predicated solely on the reference,
in the said invoice, to the ₹ symbol to denote the Indian Rupee,
allegedly before the symbol had been officially notified by the
Government. He first submits that no such contention was ever
advanced by the appellant before the learned Deputy Registrar of
Trade Marks in support of its opposition and cannot, therefore, be
raised by the appellant for the first time in the present appeal. It is
for this reason, points out Mr. Sibal, that the impugned order returns
no finding on this aspect. In any event, as the application for
registration of the mark, by the respondent, was on a ―proposed to be
used‖ basis, this aspect was irrelevant. He clarifies that the use of the
₹ symbol was only due to the software used by his client. In any
event, he points out that, apart from the said invoice, Respondent 1
had filed several other invoices to evidence sale of the products using
the impugned mark during the period 2015 to 2017, apart from sales
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 34 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
figures certified by the Chartered Accountant.
58. Where, thus, the application for registration of the mark is not
susceptible to rejection either under Section 9 or under Section 11 of
the Trade Marks Act, Mr. Sibal submits that its registration is
mandatory, and no discretion vests with the learned Deputy Registrar
in that regard.
Mr. Anand‘s submissions in rejoinder
59. Mr. Anand submits, first, in rejoinder, that the EUIPO order
th
dated 7 April 2022 would not apply because, unlike the law that
applied in that case, under the Trade Marks Act in India, the onus to
prove that the impugned mark does not create confusion or deception
is on the applicant seeking its registration, whereas the onus to prove
that a mark infringes an existing mark is on the plaintiff alleging
infringement. He underscores the finding, of the EUIPO, that
―potential deception unconnected to the quality of the goods/services
provided under the mark, and which does not impact consumer
protection, cannot lead to deceit under Article 7(1)(g) EUTMR‖. The
position in Indian law, he points out, is different, as the test is
―likelihood‖ to result in confusion or deception, not actual deceit.
Besides, in that case, the impugned mark was ‗SWISS MILITARY
BY PSM‘, which was different from the impugned mark in the
present case. Again, the impugned mark in the EUIPO order did not
make use of the cross, unlike the impugned mark before this Court.
Drawing attention to the findings in the EUIPO order, Mr. Anand
points out that the EUIPO, in that case, specifically held that ―the
expression ‗SWISS MILITARY‘ in conjunction with ‗BY PSM‘
rules out any connection to the Swiss Army or Swiss military
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 35 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
standards.‖ Mr. Anand also points out that the EUIPO order does not
consider the effect of the Geneva Convention Act, which applies only
to India.
60. For the proposition that the manner of use, by Respondent 1, of
the impugned mark was also relevant, Mr. Anand relies on
15 9
Amritdhara Pharmacy , Louis Vitton Malletier and the judgement
of the Queens Bench of the Court of Appeal in Specsavers
36
International Healthcare Ltd v Asda Stores Ltd .
6
61. Apropos Section 9(2)(a) , Mr. Anand submits that deception or
confusion could arise for any reason, which might or might not have
any element of comparison with another mark. Switzerland being a
well known confederacy, Mr. Anand submits that there is every
likelihood of an unwary consumer in India linking the goods, on
which the impugned
is to be found, with Switzerland. Mr.
19
Anand once again invokes, for this purpose, Section 57(8) of the
Evidence Act. The Court, in such cases, submits Mr. Anand, is
required to envisage a market place and visualize what would happen
if the goods, bearing the impugned mark, were sought to be sold
there.
62. The principle of territoriality, submits Mr. Anand, would not
apply in a case such as this. He seeks to distinguish Toyota Jidosha
25
Kabushiki Kaisa on the ground that, in that case, the defendant
disclaimed all knowledge whereas, in the present, Respondent 1 has
itself promoted the impugned mark in a manner to create an obvious
association with Switzerland and also sought a licence from the
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 36 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
appellant.
63. Apropos Mr. Sibal‘s submission that the appellant‘s licencees
were using a white cross on a red background as a logo for goods
manufactured in China, Mr. Anand submits that this material was
never cited before the learned Deputy Registrar and does not,
therefore, form any part of the impugned order.
Mr. Sibal in surrejoinder
64. In surrejoinder, besides reiterating the submissions already
advanced by him earlier, Mr. Sibal submits, with regard to Mr.
Anand‘s repeated emphasis on the fact that Respondent 1 had sought
a licence from the appellant, that the licence was sought for
timepieces, with which Switzerland has an indelible association and
reputation. The goods under consideration in the present case, per
contra , he submits, are textiles.
Analysis
A Preliminary Observation
65. The right to have a trade mark registered is a valuable
commercial right. Registration confers manifold rights and
privileges under the Trade Marks Act. These rights and privileges
37
operate in rem and against the whole world. They are non-
negotiable. Registration of a trade mark not only confers valuable
brand value and goodwill, thereby promoting the goods and their
36
[2012] EWCA Civ 24
37
Refer Vidya Drolia v. Durga Trading Corporation, (2021) 2 SCC 1
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 37 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
reputation in the market, but also restricts the rights and privileges of
all others who, even unintentionally, may be using a confusingly
similar mark. The right to registration must, therefore, be sedulously
guarded. Any provision which abrogates, or even curtails, the right
to registration of a mark as a trade mark has, therefore, to be strictly
construed. The right of registration to a mark cannot be denied on
fanciful apprehensions.
66. On the flip side, the Court is also required to be mindful of the
proscriptions statutorily engrafted in Sections 9 and 11 of the Trade
Marks Act. Where a mark is statutorily non-registerable under the
said provisions, the Court cannot, by interpretative calisthenics,
compel the Registrar to register it. The prohibitions against
registration, as contained in Sections 9 and 11, have a public purpose
to serve. They serve to counter-balance the rights of the industry and
the rights of the consumer public. Confusion or deception of the
consumer is completely impermissible in law. Howsoever innocent
the user of the confusing mark may be, no equities lie in his favour.
These considerations, too, therefore, have to guide the approach of
the Court.
67. The Court is, therefore, required to strike, in such cases, a
delicate balance while arriving at its conclusion.
I. Is the impugned mark a ―false trade description‖? If so, is it
non-registerable?
68. Examination of these aspects would decide the submissions of
2
both sides with respect to Sections 2(1)(i)(I) and 2(1)(za) as well as
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 38 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
6
Section 9(2)(a) of the Trade Marks Act.
69. The impugned order does not address these issues.
70. Mr. Anand submits that the impugned mark is non-
registerable, as it amounts to a ―false trade description‖. Mr. Sibal,
per contra , contends that the impugned mark is not a ―false trade
description‖ and that, even if it were, it does not, by consequence,
become non-registerable per se , as the consequences of registering a
4 22
false trade description are to be found in Sections 103 and 104 of
the Trade Marks Act.
71. Are ―false trade descriptions‖ non registerable?
20
72. Where Section 2(1)(za)(iv) applies, the answer, to my mind,
has to be in the affirmative.
73. Section 2(1)(i) of the Trade Marks Act includes, in the
definition of ―false trade description‖, ―a trade description which is
untrue or misleading in a material respect as regards the goods or
services to which it is applied‖. The provision goes on to clarify that
trade marks, or parts of trade marks, could also be ―false trade
descriptions‖. ―Trade description‖ is defined, in Section 2(1)(za)(iv),
as meaning ― any description, statement or other indication, direct or
indirect, as to the place or country in which or the time at which the
goods or services were made, produced or provided ‖. This includes,
as per Section 2(1)(za), ―any … description which is likely to be
misunderstood or mistaken for all or any of the said matters‖.
Among the ―said matters‖ is, obviously, the place or country where
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 39 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
the goods are made. Section 9(2)(a) absolutely prohibits registration
of a mark if ―it is of such nature as to deceive the public or cause
confusion‖. A trade description which is untrue or misleading in a
material respect regarding the goods to which is applied is a false
trade description. The country of manufacture of goods is certainly a
―material respect‖, within the meaning of Section 2(1)(i)(I). If a
trade mark is untrue or misleading regarding the country of origin of
the goods on which it is used, there is no reason to believe that it
would not deceive the public or cause confusion, as the intent to
deceive or cause confusion can be read into the very use of the mark.
One may, in this context, borrow the following well-known aphorism
38
of Lindley, LJ in Slazenger & Sons v. Feltham & Co. :
―One must exercise one's common sense, and, if you are driven to
the conclusion that what is intended to be done is to deceive if
possible, I do not think it is stretching the imagination very much
to credit the man with occasional success or possible success. Why
should we be astute to say that he cannot succeed in doing that
which he is straining every nerve to do?‖
Any description, statement or other indication, direct or indirect, as to
the country of manufacture or production of goods, contained in the
trade mark affixed on the goods would, therefore, be a ―false trade
description‖ and, inasmuch as the mark would be of a nature which
would deceive the public or cause confusion, would also be ineligible
for registration under Section 9(2)(a).
74. A mark which is a ―false trade description‖ within the meaning
of Section 2(1)(za)(iv) is, therefore, non-registerable.
75. Is, then, the impugned mark a ―false trade description‖ within
38
(1889) 6 RPC 531
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 40 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
the meaning of Section 2(1)(za)(iv) of the Trade Marks Act?
76. Any description, statement, or other indication as to the place
or country where the goods were made or produced, as contained in a
trade mark, would be a ―trade description‖ within the meaning of
Section 2(1)(za). The description may be direct or indirect. The
definition would also encompass any description which is likely to be
misunderstood or mistaken for an indication regarding the place or
country where the goods are made or produced.
77. Much turns, in my view, on the words ―direct or indirect‖. The
39
legislature, classically, does not engage in superfluity or tautology .
The words ―direct or indirect‖ have, therefore, to be regarded as
deliberately included. They connote, in the context of Section
2(1)(za)(iv), not merely a direct, but also an indirect description,
statement or other indication, in the trade mark, regarding the place
or country or manufacture or production of the goods. If, therefore,
the trade mark even indirectly indicates the country of manufacture
of the goods, it is a ―trade description‖ within the meaning of Section
2(1)(za)(iv).
78. ―Indirect‖ is defined, in P. Ramanatha Aiyar‘s Advanced Law
Lexicon, as ―describing something that is associated with, but not
immediately connected to, something else; something at one
remove‖. The expression ―direct or indirect‖, as used in Section
2(1)(za), has to be read in conjunction with the inclusive part of the
definition which, as used in the provision, is essentially clarificatory
39
Refer Dilbagh Rai Jerry v. U.O.I., AIR 1974 SC 130 ; C.I.T. v. R.M. Amin, (1977) 1 SCC 691 ; Umed v.
Raj Singh, (1975) 1 SCC 76
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 41 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
in nature. By virtue of clause (c) of the ―inclusive‖ part of the
definition of ―trade description‖ in Section 2(1)(za), any description
―which is likely to be misunderstood or mistaken for‖ the country of
manufacture or production of the goods would also be a ―trade
description‖. If, therefore, the country of manufacture or production
thus suggested by the use of the mark on the goods is not, in fact,
their country of manufacture or production, the mark would be a
―false trade description‖ as defined in Section 2(1)(i)(I).
79. The words ―likely to be misunderstood or mistaken‖ as used in
clause (c) of the inclusive part of the definition in Section 2(1)(za)
and the phrase ―untrue or misleading‖ as used in Section 2(1)(i)(I)
read with the expression, directly call, into application, the decision
40
in National Sewing Thread Co. Ltd v. James Chadwick & Bros ,
41
which dealt with Section 8 of the erstwhile Trade Marks Act, 1940,
which, to an extent, is a combination of clauses (a) and (c) of Section
9(2) of the present Trade Marks Act, and also forbears registration of
marks which are ―likely to deceive or cause confusion‖. The learned
Registrar of Trade Marks had, in that case, come to the conclusion,
independent of any comparison of marks or goods, that, as the mark
of which the respondent (before the Supreme Court) desired
registration was likely to deceive or cause confusion, it could not be
registered. The Supreme Court explained the legal position, on this
aspect, thus (in para 22 of the report):
―22. The principles of law applicable to such cases are well
settled. The burden of proving that the trade mark which a person
seeks to register is not likely to deceive or to cause confusion is
upon the applicant. It is for him to satisfy the Registrar that his
40
AIR 1953 SC 357
41
―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 by reason of its being likely to deceive or to cause confusion or
otherwise, be disentitled to protection in a court of justice.‖
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 42 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
trade mark does not fall within the prohibition of Section 8 and
therefore it should be registered. Moreover, in deciding whether a
particular trade mark is likely to deceive or cause confusion that
duty is not discharged by arriving at the result by merely
comparing it with the trade mark which is already registered and
whose proprietor is offering opposition to the registration of the
mark. The real question to decide in such cases is to see as to how
a purchaser, who must be looked upon as an average man of
ordinary intelligence, would react to a particular trade mark, what
association he would form by looking at the trade mark, and in
what respect he would connect the trade mark with the goods
which he would be purchasing .‖
(Emphasis supplied)
The above passage was cited, with approval, in Nandhini Deluxe v.
42
Karnataka Co-operative Milk Producers Federation Ltd .
80. In this context, the intellectual attributes of the man of
―average‖ or ―ordinary‖ intelligence stand delineated in the following
passage from the decision of the High Court of England and Wales in
43
Compass Publishing B.V. v. Compass Logistics Ltd , which was
approvingly cited and relied upon, by a coordinate Bench of this
44
Court, in The Coca-Cola Co. v. K.M. Salim :
―The test for likelihood of confusion has been considered in a
45
number of ECJ decisions, including Sabel BV v. Puma AG . The
likelihood of confusion must be appreciated globally, taking
account of all relevant factors. It must be judged through the eyes
of the average consumer of the goods or services in question. That
customer is to be taken to be reasonably well informed and
reasonably circumspect and observant, but he may have to rely
upon an imperfect picture or recollection of the marks. The court
should factor in the recognition that the average consumer
normally perceives a mark as a whole and does not analyse its
various details . The visual, aural and conceptual similarities of the
marks must be assessed by reference to the overall impressions
created by the marks bearing in mind their distinctive and
dominant components. Furthermore, if the association between the
marks causes the public to wrongly believe that the respective
42
(2018) 9 SCC 183
43
(2004) RPC 41
44
208 (2014) DLT 432
45
(1998) RPC 199
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 43 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
goods come from the same or economically linked undertakings,
there is a likelihood of confusion.‖
(Emphasis supplied)
81. Mr. Sibal repeatedly submitted that Section 9(2)(a) of the Trade
Marks Act would be attracted only if the impugned mark is of such
nature as to deceive the public or cause confusion. He is right, and I
agree with him. Section 9(2)(a) does not allow the Court to travel
outside the mark itself. The mark, by its nature , should deceive or
cause confusion.
82. At the same time, the person who should be likely to be
deceived or confused under Section 9(2)(a), or who may
misunderstand the trade description within the meaning of clause (c)
of the inclusive part of the definition of ―trade description‖ in Section
9(1)(za), or who may be ―misled‖ under Section 9(1)(i)(I), is a person
of ―ordinary intelligence‖, who ―is to be taken to be reasonably well
informed and reasonably circumspect and observant‖. In this context,
the class of consumers who are likely to purchase the goods on which
the mark is to be affixed is another relevant consideration, as held in
15
Amritdhara Pharmacy and Mahendra & Mahendra Paper Mills
46
Ltd v. Mahindra & Mahindra Ltd . The goods on which the
impugned mark is used are generally purchased by the middle or
upper middle class consumer in India.
83. 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,
46
(2002) 2 SCC 147
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 44 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
when the words ‗SWISS MILITARY‘ are 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 is the indicia of the Swiss confederation – would
regard the mark as indicating that the goods are of Swiss origin. The
mark would, therefore, be an indirect trade description regaring
the country where the goods, bearing the mark, are manufactured or
38
produced. The Slazenger principle would also directly apply in such
a case. Respondent 1 having used not only the white cross-on-red
background indicia but also the words ‗SWISS MILITARY‘ below it,
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 impugned mark, therefore, by its
very nature , has the potential to deceive or, at the very least, cause
confusion.
84. The impugned order, in my opinion, goes completely off-
tangent in extolling the virtues of the military establishment and
holding, as a sequitur, that the average consumer would not regard
goods such as textiles as originating from the Swiss army or the Swiss
military forces, irrespective of the use of the impugned mark thereon.
The virtues of the military arsenal of any country, though undeniably
worthy of respect and reverence, have nothing whatsoever to do with
the controversy at hand. Section 9(2)(a) does not expound on the
nature of deception or confusion that it envisages. So long as the
mark is of such nature as to deceive or confuse, it cannot be
registered. The proscription is absolute. Read in conjunction with
Sections 2(1)(i)(I) and clause (c) of the inclusive part of Section
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 45 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
2(1)(za), if the impugned mark deceives, or confuses, the average
consumer into mistaking the goods to be manufactured or produced in
Switzerland, i.e., of Swiss origin, it is immediately hit by Section
9(2)(a), as the goods are, admittedly, not of Swiss, but of Chinese,
origin. Whether the average consumer would regard the goods as
made or manufactured by the Swiss army , or the Swiss military
establishment is, therefore, irrelevant. What has to be seen is whether
the average consumer – with the intellectual abilities attributed to him
43
by Compass Publishing – would be deceived, or confused, into
believing the goods to have been manufactured or produced in
Switzerland , not manufactured or produced by the Swiss army .
85. ―Deception‖ and ―confusion‖ are different concepts, and, on the
distinction between the two, the following exordium of Lord Denning
47
in Parker-Knoll Ltd v. Knoll International Ltd (cited, with approval
by the Supreme Court, in, inter alia , F. Hoffmann-La Roche & Co. v.
48
Geoffrey Manner & Co. Pvt Ltd ) has become locus classicus :
―Secondly, 'to deceive' is one thing. To 'cause confusion' is
another. The difference is this: When you deceive a man, you tell
him a lie. You make a false representation to him and thereby
cause him to believe a thing to be true which is false. You may not
do it knowingly, or intentionally, but still you do it, and so you
deceive him. But you may cause confusion without telling him a
lie at all, and without making any false representation to him. You
may indeed tell him the truth, the whole truth and nothing but the
truth, but still you may cause confusion in his mind, not by any
fault of yours, but because he has not the knowledge or ability to
distinguish it from the other pieces of truth known to him or
because he may not even take the trouble to do so.‖
I may usefully profit from the following clear understanding of the
difference between ―confusion‖ and ―deception‖, vis-à-vis use of a
47
1962 RPC 265
48
(1969) 2 SCC 716
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 46 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
mark in the course of trade, from the judgement of a Division Bench
11
of this Court in Shree Nath Heritage Liquor :
― 6. When a person knows that the mark in question does not
originate from the senior user but the senior user is called to mind,
then it's a step before confusion. If on the other hand, the consumer
is in a state of wonderment if there's a connection, this is
confusion. Further, if this consumer then purchases the junior users
product, this is then deception.‖
Though this explanation is in the context of confusion between the
marks used by a ―junior‖ and a ―senior‖ user, it would hold equally
true on the aspect of distinction between confusion and deception in
general. A person is confused when he does not know which is A and
which is B. He is deceived when he is made to believe A to be B or B
to be A. That, plainly, is the distinction.
86. Once this distinction is also borne in mind, the conclusion is
obvious. 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. The mark would, thereby, be a ―false trade description‖
and be ineligible to registration within the meaning of Section
2(1)(i)(I) as well as be rendered ineligible to registration under
Section 9(2)(a) of the Trade Marks Act.
87. The observations, in the impugned order, that the impugned
mark has rounded corners, and that the arms of the cross as used in it
do not appear to be of the same length, fail to commend acceptance.
To a person who views the mark as affixed on goods, these
distinctions pale into significance. Mr. Sibal, in his arguments,
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 47 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
acknowledged the fact that the impugned mark, in a red-and-white
combination, was actually registered in favour of Respondent 2 albeit
for other items, and that it was using the said mark. Mr. Anand has
drawn my attention to the actual use of the said mark, inter alia on a
backpack, the photograph of which is to be found in para 24 supra .
The mark, as actually used, does not make apparent, to the person
viewing the mark, any difference in the lengths of the arms of the
white cross, or any roundness in the edges of the corners of the
square. In fact, para 7 of the affidavit filed by Respondent 2 in
support of its application for registration acknowledges that
Respondent 2 is the owner and proprietor ―of the said trademark/label
which is duly registered in India under the Trade Mark Act, 1999 ‖
and proceeds to furnish a tabular statement of the said registration,
which states that Respondent 1 holds registrations of
(i) the mark
for key chains,
(ii) the mark
for pens,
(iii) the mark
for school bags, back packs, cross bags,
soft luggage, travelling bags, purses, etc. and
(iv) the mark
for leather and leather imitations, animal
skins, hides, trunks, umbrellas, etc.
These marks are identical to the impugned mark. As such, the stress,
in the impugned order, on the ―rounded corners‖ of the impugned
mark is really superficial. Respondent 2 has had the same mark
registered separately for various classes of goods. Mr. Sibal
acknowledges that these registrations include registrations for the
mark in the red-and-white colour combination. The learned Deputy
Registrar, unfortunately, has erred in failing to notice these facts.
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 48 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
88. It is important, at this point, to advert to the observations of the
learned Deputy Registrar on Section 10(2) of the Trade Marks Act,
contained in para 42 of the impugned order. At the cost of repetition,
they may once again be reproduced thus:
―The Ld. Counsel for the opponent has argued that in case the
impugned trademarks is registered in black and white, as per
section 10 of the Trade Marks Act, 1999, it would be deemed to be
registered for all colors, therefore, color of the impugned
trademark is not of much significance for the purpose of
comparison of the marks. I do agree with the Ld. Counsel for the
opponent to the extent he says that as per section 10, a mark if
registered in black and white colour would be deemed to be
registered for all colors , however, it doesn’t naturally follow from
this that the mark would be deemed to be registered in every
possible color scheme/combination of colors including the color
scheme/combination of colors of the Swiss emblem .‖
(Emphasis supplied)
To my mind, the italicized words in the afore-extracted passage from
the impugned order return two mutually contradictory findings. In the
first breath, the learned Deputy Registrar agrees that the registration
of the impugned mark without limitation of colour would deem it to
be registered for all colours . In the very same breath, he goes on to
observe that it would not naturally follow that the mark would be
deemed to be registered in every possible colour scheme/combination
of colours . This distinction, between ―all colours‖ and ―every
possible colour scheme/combination of colours‖, to my mind, is too
facile to pass legal muster. In any event, in the present case, there is
only one colour involved, apart from black and white, which is red.
Once, therefore, the
mark stood registered for all colours, it also
stands registered for use by substituting the black with a red
background.
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 49 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
89. Further, the use, by Respondent 2, of the ― SWISS
MILITARY ‖ logo immediately below the white and red cross would
dispel any chance of the impugned mark being distinct or
distinguishable from the
Swiss insignia. Even if the
mark,
with slightly rounded corners, were to be distinguishable from the
mark with sharp corners, the use of the ‗SWISS MILITARY‘ logo
below the mark would efface any impression made by that slight
distinction. The
mark, even if its corners were not as pointed,
when used with the ‗SWISS MILITARY‘ logo immediately below it,
is bound, by its very nature, to create confusion in the mind of the
ordinary customer regarding the origin of the goods. To my mind, this
is obvious. An average consumer would be bound to presume,
absence conscious knowledge to the contrary, that the goods bearing
the
logo are of Swiss origin, even if, arguendo , he were not to
think that they originated from the Swiss military establishment
specifically.
90. Though it is not necessary to do so, I may also observe that the
finding, in the impugned order, that the average consumer would not
assume the goods, on which the impugned mark would be affixed, to
have originated from the Swiss military establishment, is no more
than the ipse dixit of the learned Deputy Registrar, unsupported by
any material whatsoever. It cannot, therefore, be sustained. The
engaging, by military establishments, in trade, is not an unknown
phenomenon; neither is it proscribed by law, at least in India. For that
matter, prisons and penitentiaries are also not known to be ordinarily
engaging in trade; nonetheless, we are aware of the Tihar Jail in Delhi
regularly marketing all varieties of goods, including textiles and
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 50 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
garments, under the ‗TJ‘ logo. Besides, the appellant has itself
applied for registration of the
device mark and the
‗ SWISS MILITARY ‘ word mark for a variety of goods in a variety
of classes, on ―proposed to be used‖ basis. The applications are on
record. It cannot, therefore, be presumed that the appellant would not
engage itself in manufacturing or trading activities. In any event, the
learned Deputy Registrar could not have returned such a finding with
no evidence, whatsoever, to support it.
91. For that matter, I do not see why, in facts such as these, the
38
Slazenger principle should not apply by analogy. There is no
explanation, whatsoever, forthcoming for Respondent 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
38
affixed. Applying Slazenger , there is no reason for the Court to
presume that the attempt of Respondent 2 would not be successful.
To disclaim any possibility of confusion or deception on the ground
that the corners of the square are not sharp but curved, or based on the
comparative lengths of the two arms of the white cross would, to my
mind, be mere hairsplitting. The average consumer can hardly be
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 51 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
expected to notice such fine details, especially where the mark is
embossed or depicted on textiles. The likelihood of confusion or
deception remains.
92. The impugned mark is, therefore, ineligible for registration
under Section 2(1)(i)(I) read with Section 9(2)(a) of the Trade Marks
Act.
93. Mr. Sibal had sought to contend that, as the appellant‘s
licensees were using the
and
marks for goods
which were not produced in Switzerland, the appellant was estopped
from invoking Section 9(2)(a). I am unable to agree. In the first
place, the proscription under Section 9(2)(a) is an absolute
proscription, independent of the identity of the objector. Secondly,
even on facts, the two marks cited by Mr. Sibal cannot estop the
appellant from maintaining the present appeal. The reason is obvious
from a glance at the marks. The
mark has ―WENGER‖
accompanying the white and red cross, thereby clearly displaying the
identity of the licensee. The
mark does not even have a
white and red cross. These cases, therefore, are not similar to the case
of Respondent 2. They cannot, therefore, estop the appellant either
from objecting to the impugned proposed mark of Respondent 2, or
maintaining the present appeal.
8
II. Section 144 of the Trade Marks Act
94. Mr Anand sought to rely on the manner in which Respondent 1
was advertising and promoting the goods on which the impugned
mark was being used. He drew my attention to the advertisements of
Respondent 1 which showed the Swiss flag and the snow clad Alps in
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 52 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
the background. Though Mr. Sibal opposed the reliance on the
advertisements and promotional material on the ground that the
proscription under Section 9(2)(a) applied only where the mark itself
was ―of such nature‖ as to deceive or cause confusion, Mr. Anand
8
relied on Section 144 to justify reference to the manner in which the
mark was being advertised and promoted by Respondent 1 as a factor
which was required to be borne in mind even when examining the
6
entitlement of the mark to registration in the face of Section 9(2)(a) .
95. I find myself in agreement with Mr. Sibal.
8
96. Section 144 requires the Registrar, in any proceeding relating
to a trade mark, to admit evidence ―of the usage of the trade
concerned and of any relevant trade mark or trade name or get up
legitimately used by other persons‖. The reference to the ―usage of
the trade concerned‖, when seen in conjunction with the immediately
succeeding expression ―any relevant trade mark or trade name or get
up legitimately used by other persons‖ obviously refers to the manner
in which the trade mark, forming subject matter of the proceedings, is
used by the trade . Usage of the trade is a factor which, in intellectual
property law, especially in trade mark law, is relevant only while
examining whether the mark would infringe any other existing mark,
or result in the consuming public being confused or deceived into
believing the goods of the proprietor of the trade mark to be the goods
of another, prior user.
97. Respondent 2 had, in the present case, applied for registration
of the impugned mark on a ―proposed to be used‖ basis. The
impugned order also grants registration of the mark in favour of
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 53 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
Respondent 2 on a ―proposed to be used basis‖ in respect of textile
items. The appellant does not seek to contend that, prior to the
impugned order, Respondent 2 had been using the impugned mark for
textile items. The manner in which Respondent 2 may have been
utilising the
mark in respect of which it held other subsisting
registrations for other items cannot, therefore, constitute a factor to be
legitimately taken into consideration by the learned Deputy Registrar
while adjudicating on the application forming subject matter of
consideration in the present proceedings.
98. I am not inclined, therefore, to take into consideration the
advertisements and promotional material of Respondent 2 with respect
to the use of the impugned mark of other items, for which it holds
separate registrations. Section 144 of the Trade Marks Act does not,
in my opinion, justify any such exercise.
5
III. Re: Section 9(1)(b)
99. Mr. Sibal sought to contend that the appellant was estopped
from invoking Sections 9(1)(b) of the Trade Marks Act as the
appellant had itself applied for registration of the word mark ‗ SWISS
MILITARY ‘ as well as the device mark
and relies, for
22
this purpose, on Indian Hotels . Insofar as the impugned
is
concerned, the argument has no merit, as the
and
marks are different.
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 54 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
100. Mr. Anand sought to contend that the impugned mark was not
eligible for registration in view of Section 9(1)(b) of the Trade Marks
Act. Section 9(1)(b) absolutely prohibits registration of trade marks
―which consist exclusively of marks or indications which may serve in
trade to designate ‖, inter alia , the geographical origin of the goods.
Mr. Anand‘s submission is that the impugned mark, which combines
the white cross on a red background and the words ―Swiss Military‖
below it, serves in trade to designate the geographical origin of the
goods on which the mark is affixed.
101. Mr. Anand has also relied, in this context, on the guidelines
contained in the Manual of Trade Marks and the Registry of Trade
Marks relating to the registrations of Trade Marks which indicate the
geographical origin of the goods. According to Mr. Anand, under the
said Trade Mark Manual, a trade mark which is the name of a large
and well-known country cannot be registered at all. Switzerland
being a large, well-known and well populated country, Mr. Anand
submits that the guidelines contained in the Manual on Trade Marks
completely proscribe registration of the words ‗ SWISS MILITARY ‘
as a trade mark.
102. Mr. Sibal relies, per contra , on the GI Act and the provisions
contained therein for registration of a mark denoting the geographical
origin of the goods. He submits that the establishment of a connection
between the mark and the place of origin of the goods on which the
mark is to be affixed is a pre-requisite under the GI Act, and not under
the Trade Marks Act. He further submits that the words ―Swiss
Military‖ cannot, by any stretch of imagination, be regarded as
denoting the geographical origin of the goods on which the impugned
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 55 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
mark is to be affixed. He seeks to contradistinguish the impugned
mark, for this purpose, with, for example, the ―Made in Switzerland‖
on ―Swiss made‖ marks. Section 9(1)(a), according to Mr. Sibal,
apply to such latter marks, which unequivocally point towards the
geographical origin of the goods, and not to a mark such as ―Swiss
Military‖.
103. Having heard learned Counsel, what is immediately apparent
from a reading of Section 9(1)(b) of the Trade Marks Act is that the
consumer or customer is a stranger to the said provision. The
impression of the mark on the consumer, or any other third person, is
irrelevant, where Section 9(1)(b) is concerned. Section 9(1)(b) is only
concerned with what the mark serves to designate in trade. It applies
to marks which serve, in trade, to designate, inter alia , the
geographical origin of the goods (to the extent the provision concerns
the controversy at hand).
104. Unlike Section 9(2)(a), therefore, Section 9(1)(b) is concerned
with what the applicant seeking registration of the mark intends to
convey. The word ―geographical origin‖, finding place in the
company of the words ―kind‖, ―quality‖, ―quantity‖, ―intended
purpose‖, ―values‖, and ―time of production‖, is required to be
interpreted noscitur a sociis and ejusdem generis with the said
expressions. They obviously refer to the normal recitals contained on
packages giving particulars of the goods. In the company of these
expressions, a mark can be said to ―designate the geographical origin‖
of the goods only where it unequivocally does so. Section 9(2)(a),
would stand attracted even in a situation in which the mark, though it
does not unequivocally indicate the geographical origin of the goods,
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 56 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
may confuse the public into assuming or believing such an origin.
Per contra , Section 9(1)(b) would apply only where the mark serves,
in trade, to designate the geographical origin of the goods.
105. In this context, the use of the word ―designate‖ is also of some
importance. P. Ramanatha Aiyar in his Advanced Law Lexicon,
defines the word ―designate‖ thus:
―To call by a distinctive title; to point out a thing by distinguishing it from
others; to express or declare; to indicate by description or by something
known and determinate, to point out, or mark by some particular token; to
specify.‖
―Designation‖, therefore, involves specific identification, with a
declaratory component. The word ―designate‖ is far more specific
than the word ―indicate‖. Designation involves a positive act done by
the person who designates. Additionally, it involves the intent to so
designate. It is only, therefore, where the trade mark, of which
registration is sought, consists exclusively of marks or indications
which are intended to identify the geographical origin of the goods in
trade , that the mark becomes non-registrable under Section 9(1)(b) (to
the extent it is relevant for our purpose).
106. Read thus, it cannot be held that the use of the white cross on a
red background, or the ‗ SWISS MILITARY ‘ logo below it, serves in
trade to designate the geographical origin of the goods as being
Switzerland. The possibility of such a mark confusing or deceiving
the public into believing that the goods are of Swiss origin when, in
fact, they are not, may fatally imperil the entitlement of the mark to
registration in view of Section 9(1)(a) of the Trade Marks Act;
Section 9(1)(b) would not, however, stand attracted on that ground.
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 57 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
107. In that view of the matter, I do not deem it necessary to advert
to the Guidelines issued by the Trade Mark Registry for registration of
marks which indicate the geographical origin of goods. In any event,
the applicability of the said guidelines seems questionable, as they
refer to use of names of places, countries, rivers, etc., as trademarks,
and do not seem to apply to the use of a mark such as ―Swiss
10
Military‖. The decision in Imperial Tobacco , on which Mr. Anand
relies, too, concerns itself with the entitlement, to registration, of the
word ‗Shimla‘, which is the name of a place.
108. Section 9(1)(b) of the Trade Marks Act, therefore, does not
render the impugned mark ineligible for registration as a trade mark.
7
IV. Re: Section 11(3)(a)
109. Much emphasis was placed, by Mr. Sibal, on the fact that, while
the grounds for refusal of registration envisaged by Section 9 were
―absolute grounds‖ those envisaged by Section 11 were ―relative
grounds‖. His submission is that ―relative grounds‖ would refer to
grounds which consider the mark, of which registration is being
sought, in relation to some other mark. Adverting specifically to
Section 11(3)(a), Mr. Sibal seeks to submit that the words ―by virtue
of any law‖ with which the said provision commences, have to be
read in the context of Section 11 as a whole and also noscitur a sociis
with the words ―law of passing off‖ and the ―law of copyright‖ which
find place in Clauses (a) and (b) of Section 11(3). He has also pressed
26
into service, in this context, Section 11(5) of the Trade Marks Act.
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 58 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
110. Mr. Anand contends, per contra, that the words ―by virtue of
any law‖ are wide and all encompassing. The mere fact that the law of
passing off has been particularized after the said expression in Section
11(3)(a) cannot, in his submission, narrow the sweep and ambit of the
words ―any law‖. ―Any law‖, in Mr. Anand‘s submission, would refer
precisely to ―any law‖, meaning any law in force for the time being in
India. The Geneva Convention Act is also, therefore, according to
him, one of the laws which would stand embraced by the expression
―any law‖ as used in Section 11(3)(a).
111. I must confess that the submissions of Mr. Anand did initially
appeal to me. On a deeper analysis of Section 11, however, I find
myself in agreement with Mr. Sibal.
112. Section 11(3)(a), I may note, is a very unhappily worded
provision. It is lacking in precision, which is one of the most essential
attributes of good legislation. I have, however, to interpret the
provision as it stands.
113. If one were to accept Mr. Anand‘s submission, the words ―by
virtue of any law‖ would encompass every law applicable in the
territory of India. In that event, the Geneva Convention Act would
also be one such law.
114. In its recent judgment in Renaissance Hotel Holdings Inc. v.
49
B. Vijaya Sai , a Bench of three Hon‘ble Judges of the Supreme
Court has, in the context of a trade mark dispute, referred to certain
important principles of interpretation of statutes, which courts are
49
( 2022) 5 SCC 1
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 59 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
required to bear in mind in such cases. Paras 65 to 68 of the report
read thus:
―65. We find that the High Court has failed to take into
consideration two important principles of interpretation. The first
one being of textual and contextual interpretation. It will be
apposite to refer to the guiding principles, succinctly summed up
by Chinnappa Reddy, J., in the judgment of this Court in
50
RBI v. Peerless General Finance & Investment Co. Ltd. :
―33. Interpretation must depend on the text and the
context. They are the bases of interpretation. One may well
say if the text is the texture, context is what gives the
colour. Neither can be ignored. Both are important. That
interpretation is best which makes the textual interpretation
match the contextual . A statute is best interpreted when we
know why it was enacted. With this knowledge, the statute
must be read, first as a whole and then section by section,
clause by clause, phrase by phrase and word by word. If a
statute is looked at, in the context of its enactment, with the
glasses of the statute-maker, provided by such context, its
scheme, the sections, clauses, phrases and words may take
colour and appear different than when the statute is looked
at without the glasses provided by the context. With these
glasses we must look at the Act as a whole and discover
what each section, each clause, each phrase and each word
is meant and designed to say as to fit into the scheme of the
entire Act. No part of a statute and no word of a statute can
be construed in isolation . Statutes have to be construed so
that every word has a place and everything is in its place. It
is by looking at the definition as a whole in the setting of
the entire Act and by reference to what preceded the
enactment and the reasons for it that the court construed the
expression ―Prize Chit‖ in Srinivasa
51
Enterprises v. U.O.I. , and we find no reason to depart
from the court's construction.‖
66. It is thus trite law that while interpreting the provisions of a
statute, it is necessary that the textual interpretation should be
matched with the contextual one. The Act must be looked at as a
whole and it must be discovered what each section, each clause,
each phrase and each word is meant and designed to say as to fit
into the scheme of the entire Act. No part of a statute and no word
of a statute can be construed in isolation . Statutes have to be
construed so that every word has a place and everything is in its
place. As already discussed hereinabove, the said Act has been
enacted by the legislature taking into consideration the increased
50
(1987) 1 SCC 424
51
(1980) 4 SCC 507
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 60 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
globalisation of trade and industry, the need to encourage
investment flows and transfer of technology, and the need for
simplification and harmonisation of trade mark management
systems. One of the purposes for which the said Act has been
enacted is prohibiting the use of someone else's trade mark as a
part of the corporate name or the name of business concern. If the
entire scheme of the Act is construed as a whole, it provides for the
rights conferred by registration and the right to sue for
infringement of the registered trade mark by its proprietor. The
legislative scheme as enacted under the said statute elaborately
provides for the eventualities in which a proprietor of the
registered trade mark can bring an action for infringement of the
trade mark and the limits on effect of the registered trade mark. By
picking up a part of the provisions in sub-section (4) of Section 29
of the said Act and a part of the provision in sub-section (1) of
Section 30 of the said Act and giving it a textual meaning without
considering the context in which the said provisions have to be
construed, in our view, would not be permissible. We are at pains
to say that the High Court fell in error in doing so.
67. Another principle that the High Court has failed to notice is
that a part of a section cannot be read in isolation . This Court,
speaking through A.P. Sen, J., in Balasinor Nagrik Coop. Bank
52
Ltd. v. Babubhai Shankerlal Pandya , observed thus :
―4. … It is an elementary rule that construction of a section
is to be made of all parts together. It is not permissible to
omit any part of it. For, the principle that the statute must
be read as a whole is equally applicable to different parts
of the same section .‖
This principle was reiterated by this Court
53
in Kalawatibai v. Soiryabai :
―6. … It is well settled that a section has to be read in its
entirety as one composite unit without bifurcating it or
ignoring any part of it.”
68. Ignoring this principle, the High Court has picked up clause
(c) of sub-section (4) of Section 29 of the said Act in isolation
without even noticing the other provisions contained in the said
sub-section (4) of Section 29 of the said Act. Similarly, again
while considering the import of sub-section (1) of Section 30 of the
said Act, the High Court has only picked up clause (b) of sub-
section (1) of Section 30 of the said Act, ignoring the provisions
contained in clause (a) of the said sub-section (1) of Section 30 of
the said Act.‖
(Emphasis supplied)
52
(1987) 1 SCC 606
53
(1991) 3 SCC 410
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 61 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
115. The interpretation of a statutory provision must, therefore, be
informed by text and context alike.
116. In that view of the matter, it may be erroneous on the part of the
court to interpret the expression ―by virtue of any law‖, as it figures in
Section 11(3)(a) of the Trade Marks Act, in isolation, and de hors the
rest of the clause, the accompanying clause 11(3)(b) and the
remaining sub-sections of Section 11. The expression has to be
understood in the backdrop of Section 11 as a whole, and the various
sub-sections of which the section is constituted.
117. Let us, then do so, and see what emerges.
118. The various proscriptions against registration of a trade mark,
54
in Section 11, are to be found in sub-sections (1), (2) and (3) thereof.
119. Section 11(1) prohibits registration of a mark if, because of its
identity with an earlier trade mark and similarity of goods or services
covered thereby, or because of its similarity to an earlier mark and
identity of similarity of goods or services covered thereby, there exists
54
11. Relative grounds for refusal of registration. –
(1) Save as provided in Section 12, a trade mark shall not be registered if, because of –
(a) its identity with an earlier trade mark and similarity of goods or services
covered by the trade mark; or
(b) its similarity to an earlier trade mark and the identity or similarity of the goods
or services covered by the trade mark,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of
association with the earlier trade mark.
(2) A trade mark which –
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those for which
the earlier trade mark is registered in the name of a different proprietor,
shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India
and the use of the later mark without due cause would take unfair advantage of or be detrimental to
the distinctive character or repute of the earlier trade mark.
(3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be
prevented –
(a) by virtue of any law in particular the law of passing off protecting an
unregistered trade mark used in the course of trade; or
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 62 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
a likelihood of confusion on the part of the public. The sub-section
clarifies that, within the ambit of ―confusion‖ would be included the
likelihood of association with the earlier trade mark.
120. Section 11(2) protects earlier ―well-known trade marks‖, within
55
the meaning of Section 2(1)(zg) of the Trade Marks Act. Where an
earlier trade mark is a well-known trade mark within the said
definition, a later trade mark, which is identical or similar to the
earlier trade mark, cannot be registered, if the use of such later mark
would take unfair advantage of, or be detrimental to the distinctive
character or repute of, the earlier well-known trade mark.
121. Section 11(3) prohibits registration of a trade mark if its use in
India is liable to be prevented either ―by virtue of any law in particular
the law of passing off‖ or ―by virtue of law of copyright‖.
122. All proscriptions against registration of a trade mark, in Section
11, therefore, refer to handicaps on registration in the light of earlier
existing intellectual property . Clearly, they are intended at protecting
existing intellectual property, essentially either from infringement or
from passing off.
123. This becomes starkly apparent when one reads Sections 9 and
11 in juxtaposition. The proscriptions envisaged by the various
clauses of Section 9 are absolute , and do not involve comparison with
any other existing mark, or any element of competing intellectual
(b) by virtue of law of copyright.
55
(zg) ―well-known trade mark‖, in relation to any goods or services, means a mark which has become so
to the substantial segment of the public which uses such goods or receives such services that the use of such
mark in relation to other goods or services would be likely to be taken as indicating a connection in the course
of trade or rendering of services between those goods or services and a person during the mark in relation to
the first-mentioned goods or services.
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 63 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
property interests. Registration, under Section 9, is proscribed, of
marks
(i) which are devoid of any distinctive character ( vide
Section 9(1)(a)),
(ii) which consist exclusively of marks or indications which
may serve in trade to designate the kind, quality, quantity,
intended purpose, values, geographical origin or the time of
production of the goods or other characteristics of the goods
( vide Section 9(1)(b)),
(iii) which consist exclusively of marks which are customary
to the trade, i.e. are publici juris ( vide Section 9(1)(c)),
(iv) which are of such nature as to deceive the public or cause
confusion ( vide Section 9(2)(a)),
(v) which contain or comprise of any matter likely to hurt
religious susceptibilities ( vide Section 9(2)(b)),
(vi) which comprise or contain scandalous or obscene matter
( vide Section 9(2)(c)),
(vii) the use of which is prohibited under the Emblems and
Names (Prevention of Improper Use) Act, 1980 ( vide Section
9(2)(d)), or
(viii) which consist exclusively of
(a) the shape of goods resulting from the nature of the
goods themselves ( vide Section 9(3)(a)),
(b) the shape of goods which is necessary to obtain a
technical result ( vide Section 9(3)(b)), or
(c) the shape which gives substantial value to the
goods ( vide Section 9(3)(c)).
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 64 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
In each case, therefore, 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 by Section 9, it cannot be registered. No
occasion arises, therefore, under Section 9, to refer to any other mark.
Mr. Sibal is, therefore, correct in his submission that the likelihood of
deception and confusion envisaged by Section 9(2)(a), too, has to be
an attribute of the mark itself and seen on its own, and not in
comparison with, or vis-à-vis , any other mark. It is for this reason that
the clause employs the expression ―by its very nature‖.
124. Section 9, therefore, applies to inherent attributes of the
applicant mark, of its own, whereas Section 9 applies to attributes of
the mark vis-à-vis existing marks of others. Ergo, Section 9 contains
―absolute‖ grounds to refuse registration, whereas Section 11 contains
―relative‖ grounds to do so.
125. Even read in the context of Sections 11(1) and 11(2) and the
other clauses of Section 11(3), or vis-à-vis Section 9, therefore, the
words ―by virtue of any law‖, as used in Section 11(3)(a), would
appear to apply only to law which relates to protection of existing
intellectual property of others.
126. Section 11(5), on which Mr. Sibal rightly relies, sets the issue,
in a way, at rest.
127. Section 11(5) is couched in mandatory terms, as is apparent
from the use of the word ―shall‖. It states that registration of a mark
―shall not be refused ... on the grounds specified in sub-sections (2)
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 65 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
and (3)‖ unless the proprietor of ― the earlier trade mark‖ opposes the
registration on one or more of the grounds envisaged by Sections
11(2) and 11(3). The right to refuse registration of a mark under
Section 11(3), therefore, is subject to the pre-condition envisaged by
Section 11(5) applying. It is only where the proprietor of an earlier
trade mark objects to registration of the proposed mark on one of the
grounds envisaged by Sections 11(2) and 11(3), in appropriate
opposition proceedings, that registration of a mark can be refused
under either of the said provisions.
128. This places the matter beyond pale of doubt. The pre-condition
for Sections 11(2) and 11 (3) to apply, as statutorily engrafted in
Section 11(5), requires an opposition by a proprietor of an earlier
trade mark. The proprietor of the earlier trade mark has, therefore, to
object to registration of the proposed mark on the ground (i) that it is
identical with or similar to an earlier well-known trade mark, (ii) the
use of the mark in India is liable to be prevented by any law, in
particular the law of passing off or (iii) the use of the mark in India is
liable to be prevented by the law of copyright.
129. The legislative intent, clearly, is to balance the right of an
applicant seeking registration of the later mark, with the intellectual
property rights which vest in the proprietor of the earlier mark.
130. This conclusion is also supported by the use of the particular
article ―the‖ used in the expression ―the earlier trade mark‖ in Section
11(5). The use of the article ―the‖ indicates that all proscriptions in
Sections 11(5) (2) and (3) are intended to apply to proprietorial rights
vesting in the proprietor of an earlier trade mark.
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 66 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
131. The words ―any law‖, as employed in Section 11(3)(a), would
also, therefore, have to be understood in this background. They cannot
be understood as referring to any law in force in India, which has
nothing to do with intellectual property rights vesting in the proprietor
of any earlier mark.
132. As Mr. Sibal correctly submits, if the word ―any law‖, finding
place in Section 11(3)(a) is to embrace all laws in force in India, the
proscription would cease to be ―relative‖, and would become
―absolute‖. It would, then, appropriately have to find place in Section
9, not in Section 11. Additionally, if such were the interpretation, it
would be illogical to restrict the right to object to registration, on that
ground, only to proprietors of earlier trade marks, as Section 11(5)
ordains. The fact that Section 11(3) applies only where an objection
to registration, on the grounds envisaged in the said sub-sections, is
raised by the proprietor of an earlier trade mark, indicates that the
provision does not envisage an absolute ground to refuse registration,
but envisages, instead, an objection predicated on the prejudice
suffered by the intellectual property rights of the proprietor of the
earlier trade mark .
133. It is not necessary, therefore, for me to venture into noscitur a
sociis territory as, even read in conjunction with Section 9 and the
other provisions of Section 11, in the light of the principles enunciated
49
in paras 66 to 68 of Renaissance Hotels Holdings , the words ―by
virtue of any law‖, as employed in Section 11(3)(a), cannot be
extended to embrace every law applicable in the territory of India.
Their sweep has to be restricted to laws which impact proprietorial
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 67 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
intellectual property rights vested in the proprietor of an earlier trade
mark, as is specifically ordained by Section 11(5).
th
134. The 13 Lok Sabha debates, on which both sides placed
reliance, fortify the conclusion. Despite a specific recommendation,
in the Debates, to further elaborate Clause 11(3)(a) of the Trade
Marks Bill – which metamorphosed into Section 11(3)(a) of the Trade
Marks Act after Presidential sanction – to protect India‘s
commitments under the Universal and Berne Copyright Conventions,
and its obligations under the TRIPS agreement, these suggestions
were never acted upon. The legislative intent was always, therefore,
to restrict the proscriptions against registration to the intellectual
property rights available under intellectual property legislation in
India.
135. In that view of the matter, the learned Deputy Registrar cannot
be faulted in declining the objection of the appellant against
registration of the impugned mark, predicated on Section 11(3) of the
Trade Marks Act.
136. Besides, and even otherwise, Mr. Sibal is also correct on facts
in pointing out that the appellant is not a proprietor of an earlier trade
mark. Clearly, therefore, in view of Section 11(5), the registration of
the impugned mark, as sought by the Respondent 2, could not have
been refused by the learned Deputy Registrar under Sections 11(2) or
11(3) at the instance of the appellant .
V. Power of the learned Deputy Registrar to consider other laws
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 68 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
137. I have held, earlier, that the words ―any law‖, in Section
11(3)(a) cannot extend to statutes which do not involve considerations
of intellectual property rights of others and that, therefore, the Geneva
Conventions Act does not fall within the parenthetic embrace of the
phrase ―any law‖. But what if the use of the mark, of which
registration is sought, is absolutely proscribed by some other law, as
the German Conventions Act does in the present case, according to
Mr. Anand? Can the Registrar register a mark the use of which stands
statutorily proscribed elsewhere?
138. The answer, in my view, has to be in the affirmative. The
56
Registrar of Trade Marks is appointed under Section 3(1) of the
Trade Marks Act, and the learned Deputy Registrar, who has passed
the impugned order, has apparently been empowered to do so by the
Act. In either case, the appointment of the officer is ―for the purposes
57
of this Act ‖. In M.A. Kochu Devassy v. State of Kerala , the
Supreme Court held that the expression ― ‗for the purposes of the Act‘
surely means for the purposes of all and not only some of the
provisions of the Act .‖ The expression ―for the purpose of the said
58
Act‖ was understood, in Ashok Leyland Ltd v. State of Tamil Nadu
as ―for the purpose of all the provisions of the said Act‖.
139. The power and authority of the learned Registrar, therefore,
stand circumscribed by the provisions of the Trade Marks Act. He is
appointed for discharging functions under the Act, and is the
administrative, and quasi-judicial, modus for grant of registration to
56
3. Appointment of Registrar and other officers . –
(1) The Central Government may, by notification in the Official Gazette, appoint a person to
be known as the Controller-General of Patents, Designs and Trade Marks, who shall be the
Registrar of Trade Marks for the purposes of this Act.
57
(1979) 2 SCC 117 : AIR 1979 SC 358
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 69 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
trade marks and performing all functions ancillary thereto. The
sphere of his authority, in the matter of refusal of registration cannot,
therefore, extend beyond Sections 9 to 16 of the Trade Marks Act, of
which Sections 9 and 11 contain the absolute and relative grounds on
59
which registration can be refused. Section 23(1) mandates that,
where the registration of the mark has been opposed and the
opposition has been decided in favour of the applicant, the mark shall
be registered. No discretion vests in the learned Deputy Registrar,
once the opposition is decided in favour of the applicant seeking
registration.
140. Though, therefore, the Trade Marks Act does not contain any
express proscription against the learned Deputy Registrar travelling
outside its scope in search of any other possible statutory fetters on
registration, it is clear that, holistically read, the Trade Marks Act
forms a composite and self-contained code, in the matter of
registration. The learned Deputy Registrar has, therefore, to limit the
scope of inquiry, into the entitlement of the proposed mark to
registration, to the considerations that find place in the Trade Marks
Act, and cannot travel outside it.
VI. Section 12 of the Geneva Convention Act, independently seen
58
(2004) 3 SCC 1 : AIR 2004 SC 2836
59
23. Registration . –
(1) Subject to the provisions of Section 19, when an application for registration of a trade
mark has been accepted and either—
(a) the application has not been opposed and the time for notice of opposition has
expired; or
(b) the application has been opposed and the opposition has been decided in favour
of the applicant,
the Registrar shall, unless the Central Government otherwise directs, register the said trade
mark within eighteen months of the filing of the application and the trade mark when registered
shall be registered as of the date of the making of the said application and that date shall, subject to
the provisions of Section 154, be deemed to be the date of registration.
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 70 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
141. The above conclusion would stand fortified even by Section 12
of the Geneva Conventions Act itself. What Section 12 proscribes is
use of the heraldic emblem of the Swiss confederation. There is a
statutory distinction between registration and use of a trade mark.
60
Use follows registration. Section 28(1) of the Trade Marks Act
makes this clear. The proprietor of a registered trade mark is, by
Section 28(1), invested with the right to use it. Section 12 of the
Geneva Conventions Act, therefore, affects, if at all, the right to use
the mark, not the right to have it registered. The right to registration
stands circumscribed by the Trade Marks Act, which remains a
complete code in that regard. 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 a proscription exists, and the proprietor of the trade mark
violates it, the violation may well invite sanctions as envisaged by the
proscribing statute. The right to registration of the mark is unaffected
by any such proscription. The learned Deputy Registrar, and,
consequently, this Court which is sitting in appeal over the decision of
the learned Deputy Registrar, is not required to venture into that
territory, as it is concerned only with the entitlement of the impugned
mark to registration, and not to the entitlement of Respondent 2 to use
the mark, once registered if at all.
142. To my knowledge, there does not exist, outside the Trade
Marks Act, any proscription against registration of a trade mark. Nor
has Mr. Anand invited my attention to any such proscription.
60
28. Rights conferred by registration . –
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid,
give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in
relation to the goods or services in respect of which the trade mark is registered and to obtain relief
in respect of infringement of the trade mark in the manner provided by this Act.
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 71 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
VII. Other Issues
143. The impugned order of the Learned Deputy Registrar allows the
registration of the impugned
mark without limitation of colour.
By application of Section 10(2) of the Trade Marks Act, therefore, it
also registers the mark with a white cross on red background, as
.
To that extent, the imugned order is not sustainable, as
(i) the
mark, when used for goods of Chinese origin, would
amount to a ―false trade description‖ within the meaning of Section
2(1)(i)(IV), and would therefore be ineligible to registration, and
(ii) the mark would additionally be ineligible to registration under
Section 9(2)(a) of the Trade Marks Act.
th
VII.1 Re. Tax Invoice dated 12 July 2008
th
144. Relying on Cabinet Circular dated 15 July 2010, which
officially notified the ₹ symbol for the Indian Rupee, Mr. Anand
th
sought to contend that Tax Invoice dated 12 July 2008 was
fabricated, as it used the said ₹ symbol two years prior thereto. The
submission, though seemingly fragile, is not without significance.
The only response of Mr. Sibal, to this submission, was that the
software used by Respondent 1 was employing the ₹ symbol for the
Indian Rupee. In fact, web research reveals that the ₹ sign was
shortlisted from the entries received pursuant to a contest for
submitting entries for a new symbol for the Indian Rupee announced
th
by the Indian Government on 5 January 2009. Out of 3331
responses received, five were shortlisted, from which the ₹ symbol
was selected in a meeting held of the Union Council of Ministers held
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 72 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
th
on 15 July 2010. Respondent 2 would, therefore, have to explain,
satifactorily, how the Tax Invoice, bearing the ₹ symbol, came to be
th
issued by it on 12 July 2008.
145. Respondent 2 has failed to do so. Though the point was raised
before the learned Deputy Registrar, albeit in written submissions
after conclusion of hearing, no reply, to the point, was provided by
Respondent 2. The point has again been urged in these proceedings
by the appellant, and the only explanation forthcoming, from
Respondent 2, is that it was a feature of the software used by it. The
reply is thoroughly unsatisfactory. The developers of the software
cannot be presumed to be blessed with the gift of clairvoyance, to be
able to divine the symbol that would be adopted for the Indian rupee
even before suggestions for suitable symbols were invited by the
Government from the public.
146. Prima facie , therefore, Respondent 2 has failed to satisfactorily
th
rebut the appellant‘s contention regarding the Tax Invoice dated 12
July 2008. The submission, of Respondent 2, that the contention was
irrelevant as it had applied for the impugned mark on a ―proposed to
be used‖ basis is obviously without merit. Submission of a fabricated
document for having a mark registered would ipso facto disentitle the
applicant to registration. The matter cannot be wished away by
referring to any number of other invoices which Respondent 2 might
have submitted in support of its application for registration. One
single fabricated document is itself sufficient to reject the application.
No benefit, in law, can enure in favour of a fabricator. The hands of
one who seeks a benefit, which the law provides, have to be clean.
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 73 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
147. Having said that, I do not deem it appropriate to use this factor
as determinative of the issue in controversy, as it was, in fact, raised
by the appellant only after hearing before the learned Deputy
Registrar had concluded, in written submissions. Had it been raised
during the proceedings before him, Respondent 2 would have had a
chance to rebut the allegation. That opportunity not having been
extended to Respondent 2 before the impugned order came to be
passed, and, as I find the impugned mark ineligible to registration on
other grounds, the matter is laid to rest with the above prima facie
observations.
th
VII.2 Re. Copyright Registration of Respondent 1 dated 29 April
2005
148. The genuineness, or othewise, of Copyright Registration No. A-
71091/2005, held by Respondent 1, is completely irrelevant to the
issue at hand. I do not intend, therefore, to address the submissions of
Mr Anand in that regard.
VIII. The black-and-white cross with ‗SWISS MILITARY‘ (the
mark)
149. Can it, then, be said that the impugned mark, if used in a black-
and-white format, i.e. as
, is registerable?
150. I have held the
mark not to be available for registration as
a trade mark under the Trade Marks Act, by virtue of Section 9(2)(a)
thereof. Would Section 9(2)(a) not be breached if the mark were in
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 74 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
black-and-white?
151. The answer should be obvious.
152. Section 9(2)(a) uses the words ―of such nature as to deceive the
public or cause confusion‖. I have already held that the impugned
mark, when used in a red-and-white colour format, is of such nature as
to confuse the public into linking the goods, on which the mark
figures, with Switzerland; in other words, of presuming the goods to
be of Swiss origin.
153. This impression is not attributable solely to the red-and-white
colour scheme of the mark. The words ‗ SWISS MILITARY ‘ have a
large part to play in the impression that the mark would carry. It
would be folly to analogize a mark such as ‗ SWISS MILITARY ‘
with a mark such as, for example, ‗PETER ENGLAND‘ which, as a
phrase has no etymological meaning at all, so that it it becomes
instantly fanciful, and can, therefore, be kept out of the reckoning.
‗ SWISS MILITARY ‘, however, conjures up an instant mental
picture of the Swiss military establishment. A mental connection with
Switzerland is, therefore, inevitably made. That, by itself, satisfies the
requirement of ―causing confusion‖ envisaged by Section 9(2)(a).
38
154. The Slazenger principle would also equally apply here.
There is no explanation for the adoption, by Respondent 2, of the
‗ SWISS MILITARY ‘ moniker. The use of the word ‗MILITARY‘ is
seriously prejudicial to the case of Respondent 2. It is not a word
lightly used, or, for that matter, to be lightly used. The pleadings of
Respondent 2 do not throw light on the motivation for adoption of the
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 75 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
said phrase as a trade mark. Being such an unusual use, the mark is
bound, in the perception of the ordinary consumer, to suggest a link to
the Swiss official establishment; and, perhaps, even to the Swiss
military establishment. In the absence of any material to suggest that
there was an absolute embargo on the Swiss military establishment
using the ‗ SWISS MILITARY ‘ appellation on goods put up for
trade, the learned Deputy Registrar was not, in my view, justified in
presuming that persons would never connect the goods, on which the
mark figures, with the Swiss military establishment.
155. If, for example, backpacks bearing the words ‗INDIAN AIR
FORCE‘ were to be seen by persons outside India, it is obvious, to my
mind, that they would presume a link with the Indian Air Force,
whether the words were, or were not, accompanied by the official
Indian Air Force insignia. The words ‗INDIAN AIR FORCE‘, like
the words ―‗ SWISS MILITARY ‘ carry their own solemn
connotation. It is not easily that the ordinary person – who, as already
noted, is a person who is aware and capable of discrimination – is
likely to presume that the expression ‗ SWISS MILITARY ‘ is being
used for ordinary commercially traded goods – as, however, they are –
unconnected with the Swiss military establishment.
156. In fact, the exception that the Swiss military establishment has,
as the appellant in this case, taken to the use of the impugned mark by
Respondent 2, speaks for itself.
157. Even if used in a black and white format, therefore, the
impugned mark would be ineligible for registration, in view of
Section 9(2)(a) of the Trade Marks Act, as it is of a nature which
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 76 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
would cause confusion in the mind of the public.
The Sequitur
th
158. The impugned order dated 25 July 2022, insofar as it allows
the registration of the
mark in respect of textiles without limitation
of colour, cannot sustain, whether the mark be used in a red-and-white
or a black-and-white format. In other words, both
and
would
be ineligible for registration as trade marks. The impugned order
cannot, therefore, sustain in law.
CA(COMM.IPD-TM) 158/2022
159. The mark of Respondent 2 of which the impugned order dated
th
25 July 2022, passed by the learned Deputy Registrar of Trademarks
allows registration is ‗ SWISS MILITARY‟ simpliciter, without any
cross, either black and white or red and white.
160. Mr. Anirudh Bakhru appears on behalf of Respondent 2 in this
appeal. While adopting the submissions of Mr. Sibal in CA (COMM.
IPD-TM) 158/2022 in all other respects, he submits that there are two
distinguishing features in this case. The first is that, as the mark does
not use the official Swiss
insignia, so that there can be no question
of Section 11(3)(a), read with the Geneva Conventions Act, applying.
The second is that the ‗ SWISS MILITARY ‘ mark, independently
and unaccompanied by the red and white
cross, is unlikely to
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 77 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
deceive or confuse the consumer, thereby ruling out the applicability
of Section 9(1)(b) and 9(2)(a) as well.
161. I agree with Mr. Bakhru, but only in part. Section 11(3)(a)
would not apply to the present case.
162. The observations and findings returned by me with respect to
the applicability of Section 9(2)(a) to the
mark, as contained in
paras 153 to 160 supra , would apply mutatis mutandis to the ‗ SWISS
MILITARY ‘ mark impugned in this appeal. The use of the ‗ SWISS
MILITARY ‘ appellation, even by itself and sans any accompanying
embellishments or emblems, has the clear propensity of creating
confusion in the mind of the public, regarding the origin of the goods
on which the mark is used. The ―confusion factor‖ is the use of the
appellation ‗ SWISS MILITARY ‘, and not a black and white cross,
though the use of the black and white cross may add to the confusion.
Section 9(2)(a) would, therefore, apply even if the mark ‗ SWISS
MILITARY ‘ is used without the accompanying black and white
cross.
Conclusion
th
163. Accordingly, the impugned orders dated 25 July 2022 are
quashed and set aside. It is held that the marks
,
and ‗ SWISS
MILITARY ‘ are all ineligible for registration in respect of textiles, as
claimed by the respondent. Application numbers 1944698 and 969178
filed by the respondent before the learned Registrar shall stand
rejected.
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 78 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31
Neutral Citation Number : 2023/DHC/000019
164. Appeal numbers CA(COMM.IPD-TM) 158/2022 and
CA(COMM.IPD-TM) 159/2022 stand allowed accordingly with no
orders as to costs.
C.HARI SHANKAR, J
JANUARY 4, 2023
rb/AR/dsn
Signature Not Verified
C.A.(COMM.IPD-TM) 158/2022 & cont. matter Page 79 of 79
Digitally Signed
By:SUNIL SINGH NEGI
Signing Date:04.01.2023
15:28:31