Achieving the status of a ‘well-known mark’ in the world of trademarks can sound like Heaven because the protection of well-known marks redefines the standard and objectives of trademark Protection. A well-known trade mark, in layman terms, means a mark that has become famous in no small segment of the public through its continuous usage and has therefore gained goodwill and reputation around the country. The very concept of the well-known trademark has been incorporated in the Trademark Act, 1999, to protect not only a trademark that has come to be identified with a particular type of goods or services but also for the protection of the same mark from being used about other goods and services.
The Trademarks Act, 1999, defines a well-known trademark under Section 2(1) (zg) as,
“a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.“
What is the first thing that comes to your mind when you hear the word ISKCON? A temple with a statue of Shri Krishna. Recently, there has been a new addition to the well-known trademark, ISKCON. The ISKCON brand has acquired a reputation that extends beyond its mere product/services and is no longer limited to any single class of goods or services. Finally, Bombay High Court prohibited the manufacture of clothes from the use of the “ISKCON” name.
TITLE OF THE CASE: International Society for Krishna Consciousness (ISKCON) Vs. Iskcon Apparel Pvt Ltd.
BENCH: Justice B.P. Colabawalla
JUDGEMENT DATE: June 26th, 2020
FACTS:
ISKCON was established by the late Acharya A.C. Bhaktivedanta Swami Prabhupada in New York City in 1966. ISKCON is a religious organization. The word ISKCON was derived from Plaintiff’s name that is the International (I) Society (SO) for Krishna (K) Consciousness (CON).
In the following case, the International Society for Krishna Consciousness filed a suit of permanent injunction against Iskcon Apparel Pvt. Ltd. in Bombay high court for using the mark ISKCON. The apparel company was selling clothes online in the name of ISKCON. During the hearing, ISKCON argued that, since 1971, they have been using the ISKCON trademark in India regularly, freely, continuously, uninterruptedly, and extensively in respect of various goods and services.
It has also been contended by the ISKCON that there are more than 600 ISKCON temples, 65 eco-farm communities, 110 vegetarian Restaurants, and centers all over the world, including India. They have been continuously using the mark for advertising different materials such as calendars, magazines, cards, etc. Being the owner of the mark for so long, they have gained immense goodwill and reputation not only in India but throughout the world. Therefore, Plaintiff has prayed to be declared as a well-known mark under Section 2 (1) (zg) of the Trademark Act, 1999.
On March 6th, 2020, the Bombay High Court issued its interim order. It said that the adoption of the trade name ISKCON was “deliberate with a view to trade upon the enviable reputation and goodwill acquired by the Plaintiff in the said ISKCON marks.“
LAW APPLICABLE:
Section 11(6) and Section 11(7) of 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 period, length and geographic 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 recognized 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 recognized 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.
JUDGEMENT:
The court held that ISKCON is a coined trademark of the Plaintiff. Plaintiff is the first and only person to adopt such a mark to distinguish its services. There is no evidence to indicate that any other competitor has done so or took such a mark. The court further observed that the trademark of the Plaintiff had acquired immense reputation and goodwill in India and across the globe. Also, the Plaintiff has been using the trademark openly, widely, and continuously from the beginning. The Plaintiff has been protecting the mark and has taken several actions against the infringer in the past.
The Hon’ble Judge also held that the Plaintiff for trademark ISKCON meets all the criteria and standards of well-known trademarks in compliance with sections 11(6), 11(7), and other provisions of the Trademark Act, 1999. Ultimately, the judge confirmed that the Plaintiff’s trademark falls within the scope of the well-known trademark, as provided in Section 2(1) (zg).
CRITICAL ANALYSIS:
In India, the protection of a well-known trademark is considered more important than that of an ordinary trademark. This special protection granted to well-known trademarks is the result of precedents and pronouncements that have been carefully developed by the courts. With this, the ISKCON mark is now a well-known mark and can be identified as one of the few well-known marks in a religious and charitable society.
