Commercial IP Suit (L) No. 235 of 2020

Facts: 

The International Society for Krishna Consciousness (ISKCON) filed a commercial lawsuit against the clothing company ISKCON Apparel Pvt Ltd in the Bombay High Court. ISKCON alleged the clothing maker violated its registered trademark to sell clothing online.  

ISKCON was established in 1966 in New York. It is a religious body with a global presence. The term ‘ISKCON’ is an acronym was derived from the Plaintiff’s name.

The mark ISKCON is also used on all of their advertising materials such as religious books, literature, magazines, calendars, cards, t-shirts, clothing, etc., which are circulated amongst the devotees of the Plaintiff for free or bought by people at subsidised rates. 

The Plaintiff discovered the infringement in February 2020 while conducting an online search. The Plaintiff has sent repeated summons to the Defendant but their wasn’t any response from their end, nor did anyone appear at the hearings on their behalf. 

According to the Plaintiff, the Defendant had an online clothing business under the name of ISKCON Apparel Pvt Ltd. The Defendant had changed the name of the business to Alcis Sports Pvt but still continued to use the expression "formerly known as Iskcon Apparel Pvt Ltd" on their website. The term ‘ISKCON’ was apparently used in all of their products. 

The Plaintiff argued that the mark ‘ISKCON’ is innately idiosyncratic and deserves protection. The other contention was that it had a desirable and long-standing goodwill and reputation. Therefore, continued use of the mark ‘ISKCON’ for clothing would mislead people to believe that the Defendant was somehow associated with the Plaintiff. 

Upon evaluation of the facts the remedies available to the Plaintiff would be: 

• The Plaintiff can apply for an injunction to prevent the business from using the trade mark or goodwill 
• The Plaintiff can apply to have the infringing goods destroyed 
• They can sue the Defendant for damages or seek account for lost profit 

Issues: 

• Why is there a violation if the Defendant had already changed the name of the business? 

Although the Defendant had changed the name of the business to Alcis Sports Pvt Ltd. the expression “formerly know as Iskcon Apparel Pet Ltd. would mislead people to believe that they were earlier associated with the Plaintiff. Also, the term ‘ISKCON’ was still being used in all of the Defendant’s products which would also lead people to believe that the Defendant is associated with the Plaintiff. This is clearly a case of infringement as the Plaintiff is not only registered but is also globally recognised and fulfils the criteria to be registered as a well-known mark. 

• Can the Plaintiff’s trademark be recognised as a well-known mark? 

To determine whether the mark is Well- known or not, the registry will consider following things¹: 

• That the general public has knowledge about the said mark and are able to recognise the alleged well known mark and the recognition obtained by way of promotions. 
• The duration, extent and geographical area of any use or promotion of that trademark. 
• The record of successful enforcements 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. 
• 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 circle dealing with the goods and devices to which the trademark applies. 
• Wherein a trademark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademark as a well known trademark for registration under this Act. 

Considering the criteria set to determine whether a Trademark is an well-known mark or not, it is clear that Iskcon being established back in 1966 and is recognised by the public in general as a religious organisation who also happen to sell their own products under the same brand name perfectly fits the criteria to be considered and given status of a well-known mark. 

List of sections and classes referred: 

• Class 16, 23,24, 25, 35 and 42 of the Nice Classification 
• Section 2(1)(zg) of the Trademarks Act, 1999 - Definition of well-known mark 
• Section 11(6) and Section 11(7) of the Trademarks Act, 1999 - Test and requirements of well-known mark 
• Section 135 of the Trademarks Act, 1999 - Relief in suits for infringement or passing off  

Precedents referred: 

• ITC Ltd vs Rani Sati Foods Pvt. Ltd. [Commercial IP Suit (L) No. 1465 of 2018] 

The Madras High Court granted an injunction that prevented the defendant from using the distinctive trade dress 'AASHIRVAAD' and the trademark 'AASHIRVAAD' due to the high, strict and uncompromising quality standards applied by the plaintiff on Their Atta products, which carry Aashirvaad Trade Dress, are known for their superior quality and efficacy and are extremely popular and in demand in India and various countries around the world such as Australia, Singapore, Canada and the United States of America. Due to the long and sustained presence in the market, together with substantial and uninterrupted investments made in marketing and promotion, the plaintiff's trademark 'AASHIRVAAD' and the plaintiff's various 'AASHIRVAAD' atta packaging, including the Aashirvaad trade dress, which had become a well-known brand. 

• Texmo Industries vs Taxmo Aqua Engineering Pvt. Ltd. and Ors. [C.S. No. 50 of 2017] 

The plaintiff, Texmo Industries, filed a lawsuit requesting provisional measures and instructions against the defendants, as well as a statement that their trademark was a well-known mark. The parties had been referred to mediation and settled on all the issues and the Defendants did not contest the well-known trademark claim. It was entitled to be categorised as such in terms of Section 2 (1) (zg) of the Trademarks Act 1999, at the same time a reference was made to Article 6bis of the Paris Convention for the Protection of Industrial Property, mediation agreement is part of the order that declares the plaintiff's brand well known. 

Conclusion:

The Defendant clearly used the name of an well-known trademark like Iskcon to gain profit. The Plaintiff is an already established religious organisation and also sell their products under the same name to preach their philosophy. Using such an well-known name would mislead the devotees of the Plaintiff to believe that the products sold by the Defendant are associated with the Plaintiff. Upon cross-checking the parameters set under section 11(6) and section 11(7) of the Trademarks Act, 1999 it was held that all the parameters were fulfilled in the present case and declared Iskcon a well-known mark. 

The Plaintiff was declared as a well-known mark by the Court. The court also ordered interim injunction as requested by the Plaintiff against the Defendant.

¹ Aishani Singh, How to recognise well-known Trademarks in India, 4th February 2021, 3:17 PM, https://www.mondaq.com/india/trademark/918306/how-to-recognize-well-known-trademarks-in-india