Generally speaking, if two companies' underlying goods or services are not in direct competition with one another and are not sold through the same distribution channels or locations, their trademarks do not infringe on one another.
To avoid customer confusion is one of trademark law's main goals. In order for customers to know which products came from which bakery, it would be impossible for two bakeries with the same name and emblem to coexist across the street. Due to consumer uncertainty, the bakery with the great muffins can lose business to the bakery with the awful muffins.
However, trademark law won't ban the two businesses from using the same name if the two items are unrelated to one another and aren't likely to lead to any confusion. To put it another way, the existence of the same name under several trademark registrations does not constitute trademark infringement.
The law of passing off forbids one person from falsely representing his or her products or services as belonging to the claimant's goods and services and from holding out falsely that his or her goods or services are associated with the plaintiff. Passing off and the law of registered trademarks deal with overlapping factual situations, but deal with them in different ways. Any names, marks, get-ups, or other indicia are not granted exclusive rights as a result of passing off. They are not seen as being property in and of themselves.
The law of passing off is instead intended to stop misrepresentations made to the public in the course of commerce, such as that there is some kind of affiliation between the defendant's and claimant's businesses. Another instance of passing off is when the defendant does something to deceive the public into believing the activity is connected to the claimant, causing the claimant to sustain damages. In this case, the claimant may be able to sue the defendant under the passing off statute.
An Indian clothing manufacturer sought to use a logo with the words "Swiss Military" and a white cross on a black background on their items. The representation had been approved by the trademark registration agency in July, which led Armasuisse to the Delhi High Court.
Although Armasuisse was not against the use of the white cross on a black backdrop, the Swiss procurement office's attorney warned the court that it could be interpreted as implying the goods was made in Switzerland if combined with the text. The agency was also against using anything that resembled the Swiss flag, which is a white cross on a red backdrop.
The court cited Section 9(2)(a) of the Trade Marks Act, 1999, which deals with deceptive marks, in saying that a mark's inherent characteristics (in this case, the cross sign) themselves would cause confusion in consumers. It was noted that the Act was violated by the clothing company's use of such marks. The corporation had registered the name "Swiss Military" and was using it along with the flag emblem, both of which the court found to be misleading.
Therefore, the mark would serve as an oblique trade description of the nation in which the items wearing the mark are made or produced. There is no reason for the Court to assume that the public would not be led to believe that the items were made or manufactured in Switzerland since Respondent 2 (Promoshirt) used both the white cross on red background indicia and the words "SWISS MILITARY" below it. Therefore, the contested mark "has the potential to mislead or, at the very least, induce confusion by its very character," the HC said.
The HC further noted that the contested mark amounted to a "false trade description" that was invalid for registration under the Trademarks Act since it "would clearly" lead consumers to believe that the items have been created or manufactured in Switzerland.
The HC further rejected the Deputy Registrar's order, which would have permitted Promoshirt to use the symbol as a white cross on a black backdrop or a red background and allowed registration of the contested mark "without limitation of colour."
The learned Deputy Registrar was not, in my opinion, justified in assuming that people would never connect the goods, on which the mark figures, with the Swiss military establishment, the HC said. "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 HC said.
Conclusion
Similar to the Swiss Military, the words "Indian Air Force" have a serious ring to them. The average individual is not likely to assume that the term "Swiss Military" is being used for common commercially traded goods since they are unrelated to the Swiss military establishment, despite the fact that they are aware of and capable of discrimination. In fact, the objection the Swiss military institution, the appellant in this case, has raised to Respondent 2's use of the contested mark speaks for itself. 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 would cause confusion in the mind of the public.
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