“In view thereof, I find no difficulty in holding that the Plaintiff’s trademark ISKCON is a ‘Well-Known’ trademark in India.” Justice BP Colabawalla.
ISKCON, a registered trademark has gained a ‘Well-Known’ status with its high degree of recognition extending not only in India but also abroad. That implies application of any confusingly identical or similar trademark cannot proceed for registration. This is a statutory protection granted to well-known trademarks under the Trademarks Act, 1999. Some of the examples of well-known trademarks with respect to their wide acceptability and popularity are Kit-Kat, Nivea, Google, Pepsi and Whirlpool.
A suit of trademark infringement was filed by the International Society for Krishna Consciousness (ISKCON) against ISKCON Apparel Pvt. Ltd. before the Bombay High Court in the last week of June, 2020. ISKCON Apparel Pvt. Ltd. is an apparel manufacturing company that sold its products online. This action of the company amounted to an infringement of the registered trademark in the name of ISKCON. Summons were issued to the company repeatedly but went unanswered. Then the organization approached court through Advocates Hiren Kamod, Vaibhav Keni and Neha Iyer to seek permanent injunction restraining the apparel company from using the impugned trademark.
The Defendant, ISKCON Apparel Pvt. Ltd. submitted that it had changed its name to Alcis Sports Pvt. Ltd. and filed an affidavit that it would not use ISKCON’s trademark in future. Kamod stated that after the summons were issued; the company continued using the term ISKCON in all their products despite renaming itself. Kamod further submitted that ISKCON was established in 1966 in New York and had since created a global presence for itself that dealt with a diverse range of categories. The first ISKCON temple was built in 1971 in India. ISKCON has more than 600 temples, 65 eco-farm communities, 110 vegetarian restaurants and centers worldwide. He added that the ISKCON had come to enjoy a personality that is beyond the scope of mere products, services rendered under the trademark.
After perusing the material on record, Justice Colabawalla opined that the Plaintiff’s trademark satisfied parameters as per sections 11(6) and 11 (7) of the Trademarks Act. The documents showed that the trademark ISKCON has acquired immense and long-standing reputation and goodwill throughout India and it was associated with the Plaintiff and none else. Thus, the court declared ISKCON a ‘well-known’ trademark within the meaning in Sections 2 (1) (zg) of the Trademarks Act.
Provision for allowing the Registrar to proclaim a particular trademark as ‘well known’ was brought by the Trademark Rules 2017. According to the new rule, a trademark owner can file an application in form TM-M with a request made to the Registrar for declaring the mark to be “well-known”. A well-known trade mark has been vouchsafed with extraordinary protection and safeguards against passing off and infringement of such trademarks.