Critical GI lessons from influential K-Swiss dispute as Trademark Act demands increasingly careful consideration from applicants
The growing use of geographical indications in India warrants a closer analysis of an influential decision by the country’s trademark office in an opposition proceeding, as it set key benchmarks for absolute grounds of refusal under Section 9 of the Indian Trademark Act, 1999 and reinforced the anti-dissection rule.
In this case, popular sneaker brand K-Swiss Inc., a company founded by two Swiss brothers in 1996 in the United States, applied for registration of the trademark KSWISS logo in India. The company was, at that time, the registered proprietor of the trademark KAYSWISS in India under Nos. 509845 and 602884, both in class 25.
However, the application was quickly and firmly opposed by the Swiss Federal Institute of Intellectual Property (SFIIP), a governmental agency looking after all matters concerning intellectual property (IP) in Switzerland, yielding a battle to determine whether the term ‘Swiss’ deceives the general public into believing the shoes were of Swiss origin, thus associating them with the country’s reputation as a source of ultra-high-value products.
The SFIIP claimed that the term ‘Swiss’ was a key feature of the applied-for mark – one capable of misleading customers, making them believe that the products sold under it originated in Switzerland. The institute founded this contention in its belief that Swiss-originated products enjoy an exceptional international reputation that must be strictly regulated, rooting out any use of Swiss designations/geographical indications for non-Swiss products.
To this end, it argued that the letter ‘K’ had no meaning of its own to modify the connotation of ‘Swiss’ and further, the accompanying device element resembled an ‘escutcheon’, which combined with the word ‘Swiss’ strengthened the association with Switzerland. Finally, the institute claimed that the allowance of such a misconception in the market controverted the articles of the Paris Convention, as signatory countries – India and Switzerland among them – agree to protect and uphold the intellectual property of all member states.
Conversely, the applicant, K-Swiss, asserted that its mark was inherently distinctive and that the opponent had taken no prior action against its K-SWISS/KAYSWISS registrations in Switzerland or India. The US company further declared that, by virtue of its bona fide adoption, registration and extensive use of the marks KSWISS, KAYSWISS and similar variations in numerous jurisdictions (including Switzerland), the impugned mark had had acquired distinctiveness to become a globally reputed brand/mark associated exclusively with the applicants. It compounded this argument by highlighting several Swiss formative marks on the Indian Trademarks Register, indicating that the term ‘Swiss’ was not always considered a geographical indication. Reference was also made to a decision by the Chilean Trade Marks Office disregarding the opponent’s objection to an application filed to register the ‘K-SWISS and shield device’ mark in Chile by the applicants.
In its review of the case, the hearing officer first tackled the question of whether the impugned mark contravened Sections 9(1)(a), 9(1)(b) and 9(2)(a) of the Trademark Act.
Section 9(1)(a) prohibits the registration of marks that are devoid of any distinctive character. In response to the institute’s argument that the word 'Swiss' constituted the most prominent aspect of the applied-for mark, the hearing officer emphasised a well-established trademark law principle: a mark must be analysed as a whole to determine its validity, not dissected into parts. In the hearing officer’s opinion, KSWISS was a unique composite mark that combined the word element ‘KSWISS’ with a logo of a shield with diagonal stripes.
Section 9(1)(b) does not allow applicants to register trademarks consisting exclusively of indications that may designate, inter alia, the corresponding good's geographical origin. Per the hearing officer, this provision applied only when a mark unequivocally and unambiguously stated geographical origin; the provision used the word ‘designate’, signifying more than mere indication and involving specific identification with a declaratory component. Consequently, it was ruled that the impugned trademark did not designate the product's geographical origin.
Finally, Section 9(2)(a) prohibits registration if a mark is likely to deceive or cause confusion. Per the hearing officer, from the perspective of a common individual of average intelligence, the trademark in question did not seem capable of deceiving or confusing. With regard to the section’s reference to any “false trade description”, the officer further ruled that the mark in question was not affected as it had nowhere described itself as associated with Switzerland directly or indirectly and it would be too much of a stretch to say that the impugned mark can be severed to find an indirect association with Switzerland.
To review whether the mark violated the Paris Convention, the court followed the convention’s directive to examine registrability under the jurisdiction’s local laws (ie, the Trademark Act, 1999, and the Trademarks Rules, 2017). It was determined that K-Swiss’s mark did not contravene any Indian provisions and therefore was not ineligible for registration.
In a last-ditch effort, the SFIIP also argued that K-Swiss had disclaimed the letter ‘K’ in its KSWISS mark in a prior application – hence the KAYSWISS mark – and disclaimed all rights to the former mark. However, the hearing officer invalidated these arguments due to the phonetic similarities between ‘KAY’ and ‘K’, citing provisions of Section 16 of the Trademark Act that state that nearly identical marks can be registered in the name of the same proprietor as associated marks.
Impact of the case
This case serves as a strong example of how the absolute grounds of refusal covered under Section 9 of the Indian trademarks statute require serious deliberation. The hearing officer’s order also reinforces the anti-dissection rule even in cases where no third-party marks are involved, expanding the applicability of this regulation.
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