Israel Trademark Application Number 278777 is the national phase entry of International Trademark No. 1232972 filed under the Madrid Protocol. The mark is shown above.
The Application covers Watches of Swiss origin in class 14 and was submitted by Chron AG.
The Israel Trademark Department considered the mark non-registerable for two reasons. There is a registered Israel Trademark, No 88839 for “Swiss Army” for the same goods, and the mark is confusingly similar to pending Israel Trademark Application Numbers 260989 and 273129 “Swiss Military”to Schweizerische Eidgenossenschaft v.d. Armasuisse Eidg. Departement für Verteidigung, Bevölkerungsschutz und Sport, for perfumes and other toiletries in class 3, but also for watches in class 14, and so the correct way to proceed is via a competing marks proceeding under Section 29. Chrono AG transferred the Application to Schweizerische Eidgenossenschaft (the Swiss Army) and the section 29 objection was rendered moot, however the similarity to 88839 remained and the Applicants failed to overcome the objection under Section 11(9) that there was a likelihood of confusion.
During the Examination, the Applicant submitted evidence to support their claims, including a letter by Mr Peter Emch, the Chief Legal Counsel to the effect that the applicant is part of the Swiss Defense Department of the Swiss Government and is the body entitled to protect military trademarks, including Swiss Army, Swiss Military and Swiss Air Force.
Deputy Commissioner Ms Jacqueline Bracha noted that the Applicant claimed that there is a difference between Swiss Army and Swiss Military, since the term military is broader than army. The two marks look and sound different and the only commonality is the word Swiss which is a geographical adjective.
During the hearing it transpired that the word ‘military’ means ‘of or relating to the army’ and both the owner of the mark and the applicant use their terms together with the cross that is the emblem of the Swiss Federation and which further increases the likelihood of confusion.
Martin Shneider, Legal Counsel to the Swiss Army submitted an affidavit stating that it is the Swiss Army who are authorized by the Swiss Government to both the pending application and the issued mark to the third-party. The third party received a license from the Swiss government to register the term SWISS ARMY for watches and knives that are made in Switzerland and conform to quality standards.
In the circumstances, Ms Bracha did not think that the consumers would be confused regarding the source of goods carrying the requested mark or the issued mark as both are essentially owned and managed by the Swiss Army. Consequently the mark is registerable.
Ruling by Ms J Bracha concerning registerability of Israel Trademark Application Number 278777 “Swiss Military by Chrono”.
I think that in this case, the registered owner of the Swiss Army mark 88839 (Swiss Army Brand LTD, a Delaware Corporation), should have been contacted to confirm Mr Emch’s story, and that mark should be recorded as owned by Swiss Army and exclusively licensed to Swiss Army Brand LTD.