The Bombay High Court on Friday declared the registered trademark ‘ISKCON’ of the religious organisation International Society for Krishna Consciousness as a‘well-known mark in India (ISKCON v. Iskcon Appaeral Pvt. Ltd. & Anr).
Well-known trademarks enjoy broader protections than ordinary trademarks, in view of their widespread reputation and recognition.
In his June 26 order, Justice BP Colabawalla found merit in ISKCON’s plea for recognising its trademark as a well-known mark, given that the said mark had come to enjoy a personality beyond the scope of mere products/services rendered under the trademark ISKCON.“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. In view thereof, 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.”Bombay High Court
The judge observed that “I have no doubt in my mind that the Plaintiff’s trade mark ISKCON has come to enjoy a personality that is beyond the mere products/services rendered thereunder and the recognition, reputation and goodwill of the said trade mark ISKCON is today no longer restricted to any particular class of goods or services.”
Appearing for ISKCON, Advocate Hiren Kamod recounted that the mark was conceptualised by fashioning an acronym out of name given for the the Krishna consciousness movement founded by AC Bhaktivedanta Swami Prabhupada at New York in 1966, i.e. the International Society for Krishna Consciousness
He went on to submit that the movement has been using the ISKCON trademark regularly, openly, continuously, uninterruptedly and extensively in respect of various goods and services since 1971 at least, with a view to distinguish the goods/services bearing the said mark ISKCON from those of others.
The registered trademark was also diligently safeguarded, as guaged from the successful legal proceedings initiated by the religious organisation against the misuse of its mark ISKCON.
As such, it was contended that ISKCON fulfilled all the conditions outlined in Section 11 (6) and (7) of the Trademarks Act, 1999 to be recognised as a well known mark.
These submissions were made in a trademark infringement suit initiated against Iskcon Appaeral Pvt. Ltd. The Court was, however, informed that the defendant had since changed its name to Alcis Sports Private Limited. It further undertook to refrain from using the trademark or name of ISKCON in any matter whatsoever.
Additionally, the defendant did not dispute the submissions made by its opponent that “ISKCON” deserved recognition has a well-known mark.
In this backdrop, the Court proceeded to allow the plaintiffi’s prayer to recognise its brand ISKCON as a well-known mark, while noting that there was sufficient material showing that this mark had acquired immense and long-standing reputation and goodwill throughout India and abroad.
“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”, the order notes.
Advocate Hiren Kamod appeared for the plaintiff organisation, along with Advocates Vaibhav Keni and Neha Iyer briefed by Legasis Partners.