By – Nidhi Tandon
One of the recent additions to the list of well-known marks in India is ISKCON (Said Mark), the acronym and trademark of The International Society for Krishna Consciousness. This order was issued by the Bombay High Court (BHC) in a suit filed by The International Society for Krishna Consciousness (“Plaintiff”) against Iskcon Apparel Pvt. Ltd. (“Defendant”) to restrain the Defendant from using the mark ISKCON in relation to apparels. The Plaintiff had also sought that “ISKCON”be declared a well-known mark under Section 2 (1) (zg)[1] of the Trademark Act, 1999(Act).
The Plaintiff was established in the US in 1966 and the first ISKCON temple in India was constructed in 1971. The Plaintiff contended that it has been regularly, openly, continuously and extensively using ‘ISKCON’ in India since 1971. The Plaintiff also contended that ‘ISKCON’ has gained tremendous goodwill and reputation not only in India but across the globe so much so that the recognition, reputation and goodwill of ‘ISKCON’ was no longer restricted to any particular goods, services or activities. Thus, the mark ‘ISKCON’ enjoys popularity beyond the scope of mere goods or services for which it was originally adopted. The Plaintiff also pointed out that it has been successful in enforcing its rights in the mark “ISKCON” before various fora and has spent substantial amount of money on publicity and advertisement of the mark ‘ISKCON’.
The Defendant gave an undertaking that it will not use the trade mark “ISKCON” in any manner whatsoever. Thus, the relief of permanent injunction was automatically granted.
For a trademark to be recognised as ‘well known’, it has to satisfy the requirements of Sections 11 (6) and 11 (7) of the Act. These sections provide that the Registrar while determining the well-known status of a mark must take into account its recognition, goodwill and knowledge amongst relevant section of the public, duration, advertising, publicity, etc.
The BHC held the trademark “ISKCON” to be a well-known trademark based on the following factors:
ISKCON is a very distinctive coined term, adopted by the Plaintiff since 1971.
Longstanding reputation and goodwill acquired throughout India and outside.
Plaintiff has been diligently safeguarding its rights and has initiated legal proceedings against infringers of its trademark “ISKCON”.
Claim of well-known trademark was not disputed by the Defendant.
Accordingly, BHC declared ‘ISKCON’ to be a well-known trademark based on the materials satisfying the statutory requirements of a well-known trademark.
[1] “well-known trade mark”, in relation to any goods or services, means 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.