ISKON satisfies Section 11(6) and 11(7) of the Trade Marks Act, 1999 – Bombay HC

Pranjal Sharma | Symbiosis Law School, Hyderabad | 29th June 2020

INTERNATIONAL SOCIETY FOR KRISHNA CONSCIOUSNESS (ISKCON) VS ISKCON APPAERAL PVT. LTD.

FACTS

1. The case arises out of plaintiff filing a permanent injunction against the defendant, restraining the defendant from infringing the plaintiff’s registered trademark.
2. Mr. Roshan Baid, Director of Defendant No.2 submits that Iskcon Apparel Private Limited, i.e. Defendant No.1, has changed its name to Alcis Sports Private Limited, i.e. Defendant No.2 and submits a copy of his Affidavit-cum-Undertaking dated 23rd June 2020 stating that the Defendants will not use the trademark/name ISKCON by itself or as a part of the trademark/name or in any manner whatsoever including the impugned expression “Formerly known as ISKCON”.
3. The lawyer for the plaintiff submitted that in 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.
4. He submitted that presently, there are more than 600 ISKCON temples / 65 eco-farm communities, 110 Vegetarian Restaurants and centres all over the world including in India.
5. The Plaintiff has been regularly, openly, continuously, uninterruptedly, and extensively using the said mark ISKCON in respect of various goods and services since at least the year 1971.
6. The lawyer for the plaintiff submitted that parameters that are required to be taken into consideration for a well-known trademark as per Section 11(6) and 11(7) of the Trademarks Act, 1999 are fulfilled in the present case.

RULE OF LAW

Section 11(6) and Section 11(7) of the The Trademarks Act, 1999

Section 11(6) – The Registrar shall, while determining whether a trademark is a well-known trademark, take into account any fact which he considers relevant for determining a trademark as a well-known trademark including –

• the knowledge or recognition of that trademark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trademark,
• the duration, extent and geographical area of any use of that trademark.
• the duration, extent and geographical area of any promotion of the trademark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trademark applies;
• the duration and geographical area of any registration of or any publication for registration of that trademark under this Act to the extent they reflect the use or recognition of the trademark;
• the record of successful enforcement of the rights in that trademark, in particular, the extent to which the trademark has been recognised as a well-known trademark by any court or Registrar under that record.

Section 11(7)

The Registrar shall, while determining as to whether a trademark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account –

•  the number of actual or potential consumers of the goods or services;
• the number of persons involved in the channels of distribution of the goods or services,
• the business circles dealing with the goods or services to which that trademark applies.

JUDGMENT

The humble court held that claim of the Plaintiff that ISKCON is a well-known trademark is not disputed by the Defendant. It is clear that ISKCON is a coined trademark of the Plaintiff, that is to say, that the said term ISKCON did not exist prior to the Plaintiff’s adoption and use of the same and on grounds of this it requires the highest degree of protection. 

The court also held that according to the submissions made by the plaintiff the trademark of the plaintiff has acquired immense long-standing reputation and goodwill within and outside the country, and it is to be duly noted that the trademark is associated only to the plaintiff and no one else, keeping in mind that the plaintiff has been diligently protecting it.

The Hon’ble Judge also held that Plaintiff’s trademark ISKCON has come to enjoy a personality that is beyond the mere products/services rendered hereunder and the recognition, reputation and goodwill of the said trademark ISKCON is not any longer restricted to any particular class of goods or services. the Plaintiff’s trademark ISKCON has wide acceptability.

The court is satisfied that ISKCON satisfies the requirements and tests of a well-known trademark as contained in Sections 11(6), 11(7) and other provisions of the Trade Marks Act, 1999, pertaining to this it is clear that the defendant being a clothing merchant can not use the trademark.