Recently, the High Court of Bombay declared that the trademark “ISKCON” is a well-known trademark within the meaning of the Indian Trade Marks Act, 1999 and opined that the said trademark adopted by International Society for Krishna Consciousness, the Plaintiff in the instant matter deserves the highest degree of protection under the Trade Marks Act, 1999.
The Plaintiff, International Society for Krishna Consciousness (ISKCON) filed a commercial suit against Iskcon Apparel Private Limited, the defendant seeking inter-alia permanent injunction restraining the defendant from infringing on and passing off of the registered trademarks “ISKCON” of the Plaintiff. The Plaintiff had also sought a decree of declaration that the trademark “ISKCON” is a well-known trademark in India.
The Plaintiff submitted that it was established in the United States Of America in 1966 and then expanded its presence all over the world and has been present in India since 1971. It was also submitted on behalf of the Plaintiff that the trademark “ISKCON” is a coined term being an acronym of its Organisation “International Society for Krishna Consciousness”. Further it was also submitted that the Plaintiff had secured registrations for the trademark “ISKCON”, which has been widely used in all its advertisement materials and that the same has been regularly, openly, continuously, uninterruptedly and extensively used in India since 1971. The Plaintiff also submitted that it has been successful in enforcing its rights in its mark “ISKCON” before various fora and has spent substantial amount of money on publicity and advertisement of its trademark “ISKCON”. Finally it was also submitted by the plaintiff that the trademark “ISKCON” is no longer restricted to any particular goods/services/activity and that it has come to enjoy a personality that is beyond the scope of mere products/services rendered under the trademark “ISKCON”. Accordingly, it was submitted that the trademark “ISKCON” has satisfied all the parameters that are required to be taken into consideration for a mark to be recognised as a well-known trademark within the meaning of Sections 11 (6) and 11 (7) of the Trade Marks Act, 1999.
The Defendant was originally incorporated as Iskcon Apparel Pvt. Ltd amended its Corporate name to Alcis Sports Private Limited during the year 2017. One of the directors of the Defendant company had appeared through video conferencing in the instant hearing before the Hon’ble High Court of Bombay and submitted that an Affidavit-cum-undertaking has been filed by him submitting to a decree of the court in terms of the prayer of the Plaintiff as per its plaint. Further it was also undertaken by the defendant that it will not use the trademark “ISKCON” in any manner whatsoever.
Based on the above submissions of the parties, the Hon’ble High Court of Bombay decided in favour of the Plaintiff and held the trademark “ISKCON” to be a well-known trademark based on the following factors:
– ISKCON is a coined term and originally adopted by the Plaintiff.
– Longstanding reputation and goodwill acquired throughout India as well as in other countries.
– ISKCON has been diligently safeguarding and protecting its rights and has initiated legal proceedings against the infringers misusing its trademark “ISKCON”.
– Claim of well-known trademark was not disputed by the Defendant.
It was held that the trademark “ISKCON” of the Plaintiff has come to enjoy a personality that is beyond the mere products/services and its goodwill is no longer is not restricted to any particular class of goods or services. Accordingly, an order was passed by the Hon’ble High Court of Bombay declaring the trademark “ISKCON” to be a well-known trademark based on the materials satisfying the requirements and tests of well-known trademark as contained in Sections 11(6), 11(7) and other relevant provisions of the Trademarks Act, 1999.
As per the Indian Trademark Law, a brand owner can seek highest degree of protection over its trademark either by way of filing an Application to register the trademark as a well-known trademark or by seeking declaration by the Court, the Registrar of Trademarks and Intellectual Property Appellate Board in a litigation matter. However, there is a procedural aspect which is under a debate that whether a trademark can be added as part of the list of well-known trademarks in the records of the Trademarks Registry merely based on the Court’s declaration or a separate Application has to be necessarily filed with the Trademarks Registry along with the Court’s declaration to include a trademark under the well-known category.