“ISKCON” Is A Well-Known Mark In India: Bombay HC
Section 2(1) (zg) of Trade Mark Act, 1999 defines “Well-known” trade mark. Inshort, well-known trademark means a mark which has become so to the substantial segment of the public which uses such goods or services tha the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection. It simply means that an ordinary trade mark becomes a well-known trade mark due to its knowledge or recognition in the public.
Whether a particular trade mark is a well-known trade mark or not is determined by the Registrar of trade marks. While making such determination, the Registrar considers relevant factors as well as the facts provided in section 11(6) & 11(7) of the Trade Marks Act, 1999.
About this case:
In this case, the Plaintiff has filed the suit seeking permanent injunction restraining the Defendants from infringing the Plaintiff’s registered trademarks. Also, the Plaintiff has sought a decree of declaration that the Plaintiff’s trade mark ISKCON is a ‘well-known trade mark’ in India. Earlier, when ad-interim relief was granted against the defendant and as a result the defendant has changed the name from the “Iskcon Apparel Private Limited” to “Alcis Sports Private Limited”. Also, the defendant has given an undertaking that the he will not use the trade mark / name ISKCON by itself or as a part of the trade mark / name or in any manner whatsoever.
Further, the Plaintiff claimed that he is entitled to a declaration that its trade mark ISKCON is a well-known trade mark in India. Following that he has made detailed submissions before the Court regarding the nature of services offered by the Plaintiff under the trade mark ISKCON and the kind of wide reputation and goodwill that has been acquired by the trade mark ISKCON.
Furthermore, the Plaintiff submitted that in or around the year 1966, the Plaintiff was founded by the Late Acharya, His Divine Grace A. C.Bhaktivedanta Swami Prabhupada, when he started the Krishna Consciousness Movement in the name and style of “International Society for Krishna Consciousness” (ISKCON) in New York, United States of America. He submitted that within a short span of time, the said movement spread all over the world and gained immense popularity and/or name and fame. The acronym / term / mark ISKCON was derived and/or adopted from the Plaintiff’s name, i.e. I from International, S from Society, K from Krishna and Con from Consciousness. The Plaintiff is commonly known as “ISKCON”. He submitted that the mark ISKCON, apart from being the abbreviated name of the Plaintiff is also used and/or appears on all the advertising material. The Plaintiff has made applications/secured registrations in respect of the trade mark ISKCON and/or marks containing ISKCON as one its leading, essential, distinctive and prominent feature in respect of various goods/services/classes.
The Bombay High Court held:
The bench of Justice B.P.Colabawalla observed that it is clear that ISKCON is a coined trade mark of the Plaintiff, that is to say that the said term ISKCON did not exists prior to the Plaintiff’s adoption and use of the same. Since it is a coined trade mark which is associated exclusively with the Plaintiff, it undoubtedly deserves the highest degree of protection. The documents / material evidently show that the Plaintiff’s trade mark ISKCON has acquired immense and long-standing reputation and goodwill throughout India and abroad. There can be no doubt that the trade mark ISKCON is associated with the Plaintiff and no one else. Furthermore, the Plaintiff has been diligently safeguarding and protecting its rights in the said trade mark ISKCON and has initiated proceedings before various forums against the misuse of its trade mark ISKCON and been successful in enforcing its rights in its mark ISKCON.
The Bombay High Court held that from the material placed on record, it is evident that :
(a) the Plaintiff’s trademark ISKCON has wide acceptability;
(b) the popularity of the Plaintiff’ s trademark ISKCON extends not only in India but in other countries as well;
(c) the Plaintiff is using its trade mark ISKCON openly, widely and continuously since the beginning; and
(d) the Plaintiff has taken several actions against various infringers in the past.
Justice B.P.Colabawalla opined that Plaintiff’s trade mark ISKCON satisfies the requirements and tests of a well-known trade mark as contained in Sections 11(6), 11(7) and other provisions of the Trade Marks Act, 1999.
Also, found that “I find no difficulty in holding that the Plaintiff’s trade mark ISKCON is a ‘well-known’ trade mark in India within the meaning provided in Sections 2 (1)(zg) of the Trade Marks Act, 1999.”
International Society for Krishna Consciousness (ISKCON) (Plaintiff) vs Iskcon Appaeral Pvt. Ltd. & Anr. (Defendant) COMMERCIAL IP SUIT (L) NO. 235 OF 2020 Bombay HC
Read Complete Order Click Here