ISKCON, the plaintiff known throughout the world for his devotion to a Hindu deity, Lord Krishna, sued Iskcon Apparel, a clothing corporation for violating their trademark “ISKCON” when they sold garments. The plaintiff requested the court to order that the defendant be stopped from breaching its trademark. The applicant requested a permanent decree of declaration recognizing ‘ISKCON’ as a ‘world-famous trademark,’ along with a permanent injunction.
It was alleged that though the defendant replaced its name with Alcis Sports Pvt. Ltd but they still kept on using the name “Iskcon” in the course of trade. In February 2020, an infringement case was lodged and the court issued a temporary relief on 6 March 2020 in order to take account of the case.
ISKCON’s creator was Late Acharya who initiated the Krishna Consciousness Movement in New York in 1966 and called the Krishna Consciousness International Society and is abbreviated by the word ISKCON. The word “ISKCON” was then invented by the plaintiff and never existed before.
1.Whether the trade name “ISKCON” complies with the provisions of the Trademark Act, 1999 and qualifies for being a “well-known trademark”?
2.Whether an injunction should be passed against the defendant company restraining them from using the name Iskcon in the course of trade?
Section 11 (6) of Trademarks Act,1999 defines a ‘ well known trademark’. It states that the Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including—
(i) the knowledge or recognition of that trade mark in the relevant section of the public, including knowledge in India obtained as a result of promotion of the trade mark;
(ii) the duration, extent and geographical area of any use of that trade mark;
(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trademark applies;
(iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;
(v) the record of successful enforcement of the rights in that trade mark; in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.
Section 11 (7) of The Trademarks Act 1999 states that,
The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account—
(i) the number of actual or potential consumers of the goods or services;
(ii) the number of persons involved in the channels of distribution of the goods or services;
(iii) the business circles dealing with the goods or services, to which that trademark applies.
The single bench of the judge declared the ISKCON acronym “to be a well known trademark” in accordance with the criteria set out in Section 11(6) and 11(7) of the Trade Marks Act,1999 as well as other relevant provisions of the Trade Marks Act,1999. The honourable Judge pointed out that the symbol has been invented and is associated solely with the plaintiff, thus showing that it has the highest standard of protection.
The Court observed the following:
- The evidence presented by the plaintiff demonstrates how popular the organization is and to what degree.
- There never was a word ISKCON, and the first to fit was the plaintiff.
- The ISKCON brand has risen worldwide and is also gaining enormous popularity in India.
- The trademark was commonly, consistently and publicly used by the plaintiff since 1966.
- In the past the plaintiff has launched numerous infringement proceedings for infringement of his trademark.
Therefore, the Court granted Iskcon Apparel a permanent injunction to prohibit the use of the ISKCON trade mark.