International Society for Krishna Consciousness (ISKCON) vs. ISKCON Apparel Pvt. Ltd. & Anr.

International Society for Krishna Consciousness (ISKCON) vs. ISKCON Apparel Pvt. Ltd. &  Anr.. Jurisdiction
-High Court of Judicature at Bombay, Ordinary Original Civil Jurisdiction, Commercial Division.
-Date of Judgment: 26th June 2020.
-Presiding Judge: Hon’ble Justice B. P. Colabawalla.
Facts of the Case
The plaintiff, the International Society for Krishna Consciousness (ISKCON), initiated a commercial intellectual property suit against the defendants, ISKCON Apparel Pvt. Ltd. (later renamed Alcis Sports Pvt. Ltd.), alleging trademark infringement and seeking a declaration that the trademark “ISKCON” is a well-known mark in India.
ISKCON, founded in 1966 by His Divine Grace A. C. Bhaktivedanta Swami Prabhupada, is a globally renowned organization promoting Krishna Consciousness. The acronym ISKCON is derived from its full name and has been widely used since its inception for identifying its religious, educational, and commercial activities. ISKCON claimed:
1. Extensive use of the mark in more than 600 temples worldwide.
2. Substantial investments in advertising and promotional activities.
3. Registration of the trademark across multiple classes in India and abroad.
4. The domain name www.iskcon.org has been operational since 1994.
The defendants, under the name ISKCON Apparel Pvt. Ltd., were accused of using the trademark “ISKCON” without authorization, which amounted to infringement and passing off. The plaintiff contended that the trademark had attained global goodwill and deserved the highest level of legal protection as a well-known trademark under the Trade Marks Act, 1999.
Issues
-Trademark Infringement: Whether the defendants' use of the trademark “ISKCON” constituted infringement under the Trade Marks Act, 1999.
-Well-Known Trademark Status: Whether the trademark “ISKCON” qualifies as a well-known trademark under Indian trademark laws.
Arguments by the Plaintiff
1. The term “ISKCON” was coined by the plaintiff and had no prior existence, making it inherently distinctive and uniquely associated with the plaintiff.
2. ISKCON’s extensive reputation and goodwill, both in India and internationally, made the trademark highly recognizable and deserving of well-known trademark status.
3. The defendants’ use of the mark “ISKCON” was an unauthorized appropriation of the plaintiff’s intellectual property, causing confusion and dilution of the mark’s distinctiveness.
4. The defendants themselves admitted to using the trademark “ISKCON” and submitted an affidavit-cum-undertaking, agreeing to refrain from such use.
Arguments by the Defendants
1. The defendants’ director, Mr. Roshan Baid, submitted an affidavit-cum-undertaking stating:
-The company had changed its name from ISKCON Apparel Pvt. Ltd. to Alcis Sports Pvt. Ltd..
-The defendants would cease using the name “ISKCON” or any derivative thereof.
2. The defendants submitted to the decree sought by the plaintiff in terms of the reliefs claimed.
Court's Findings
1. Trademark Infringement: The court found that the plaintiff’s trademark “ISKCON” was inherently distinctive and had gained immense goodwill and reputation. The defendants’ use of the mark without authorization constituted infringement and passing off.
2. Well-Known Trademark:
-The court analyzed the parameters under Sections 11(6) and 11(7) of the Trade Marks Act, 1999 and found that “ISKCON” satisfied all criteria for being a well-known trademark.
-The court noted the plaintiff’s extensive global presence, continuous and uninterrupted use of the mark, and the proactive legal measures taken to protect its rights.
Judgment
1. The court decreed the suit in favor of the plaintiff and granted the following reliefs:
-A permanent injunction restraining the defendants from using the trademark “ISKCON” in any manner.
-A declaration that the trademark “ISKCON” is a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999.
2. The defendants were directed to submit the original affidavit-cum-undertaking to the court within two weeks of the resumption of normal court operations.
3. No order as to costs.
4. Refund of court fees as per applicable rules.
Significance of the Judgment
1. Reaffirmation of Well-Known Trademark Protection: The court’s declaration of “ISKCON” as a well-known trademark underscores the protection granted to marks with significant global reputation and goodwill.
2. Trademark Enforcement in Religious and Non-Profit Sectors: The judgment highlights the need to protect intellectual property rights even in religious and charitable organizations.
3. Case Precedent: The court referenced prior judgments, including ITC Ltd. vs. Rani Sati Foods Pvt. Ltd. and Texmo Industries vs. Texmo Aqua Engineering Pvt. Ltd., to establish the principles for well-known trademarks.
This case emphasizes the importance of intellectual property protection for organizations with significant cultural and commercial influence, ensuring that their trademarks are safeguarded against misuse and dilution.

Jurisdiction

-High Court of Judicature at Bombay, Ordinary Original Civil Jurisdiction, Commercial Division.

-Date of Judgment: 26th June 2020.

-Presiding Judge: Hon’ble Justice B. P. Colabawalla.

Facts of the Case

The plaintiff, the International Society for Krishna Consciousness (ISKCON), initiated a commercial intellectual property suit against the defendants, ISKCON Apparel Pvt. Ltd. (later renamed Alcis Sports Pvt. Ltd.), alleging trademark infringement and seeking a declaration that the trademark “ISKCON” is a well-known mark in India.

ISKCON, founded in 1966 by His Divine Grace A. C. Bhaktivedanta Swami Prabhupada, is a globally renowned organization promoting Krishna Consciousness. The acronym ISKCON is derived from its full name and has been widely used since its inception for identifying its religious, educational, and commercial activities. ISKCON claimed:

1. Extensive use of the mark in more than 600 temples worldwide.

2. Substantial investments in advertising and promotional activities.

3. Registration of the trademark across multiple classes in India and abroad.

4. The domain name www.iskcon.org has been operational since 1994.

The defendants, under the name ISKCON Apparel Pvt. Ltd., were accused of using the trademark “ISKCON” without authorization, which amounted to infringement and passing off. The plaintiff contended that the trademark had attained global goodwill and deserved the highest level of legal protection as a well-known trademark under the Trade Marks Act, 1999.

Issues

-Trademark Infringement: Whether the defendants' use of the trademark “ISKCON” constituted infringement under the Trade Marks Act, 1999.

-Well-Known Trademark Status: Whether the trademark “ISKCON” qualifies as a well-known trademark under Indian trademark laws.

Arguments by the Plaintiff

1. The term “ISKCON” was coined by the plaintiff and had no prior existence, making it inherently distinctive and uniquely associated with the plaintiff.

2. ISKCON’s extensive reputation and goodwill, both in India and internationally, made the trademark highly recognizable and deserving of well-known trademark status.

3. The defendants’ use of the mark “ISKCON” was an unauthorized appropriation of the plaintiff’s intellectual property, causing confusion and dilution of the mark’s distinctiveness.

4. The defendants themselves admitted to using the trademark “ISKCON” and submitted an affidavit-cum-undertaking, agreeing to refrain from such use.

Arguments by the Defendants

1. The defendants’ director, Mr. Roshan Baid, submitted an affidavit-cum-undertaking stating:

-The company had changed its name from ISKCON Apparel Pvt. Ltd. to Alcis Sports Pvt. Ltd..

-The defendants would cease using the name “ISKCON” or any derivative thereof.

2. The defendants submitted to the decree sought by the plaintiff in terms of the reliefs claimed.

Court's Findings

1. Trademark Infringement: The court found that the plaintiff’s trademark “ISKCON” was inherently distinctive and had gained immense goodwill and reputation. The defendants’ use of the mark without authorization constituted infringement and passing off.

2. Well-Known Trademark:

-The court analyzed the parameters under Sections 11(6) and 11(7) of the Trade Marks Act, 1999 and found that “ISKCON” satisfied all criteria for being a well-known trademark.

-The court noted the plaintiff’s extensive global presence, continuous and uninterrupted use of the mark, and the proactive legal measures taken to protect its rights.

Judgment

1. The court decreed the suit in favor of the plaintiff and granted the following reliefs:

-A permanent injunction restraining the defendants from using the trademark “ISKCON” in any manner.

-A declaration that the trademark “ISKCON” is a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999.

2. The defendants were directed to submit the original affidavit-cum-undertaking to the court within two weeks of the resumption of normal court operations.

3. No order as to costs.

4. Refund of court fees as per applicable rules.

Significance of the Judgment

1. Reaffirmation of Well-Known Trademark Protection: The court’s declaration of “ISKCON” as a well-known trademark underscores the protection granted to marks with significant global reputation and goodwill.

2. Trademark Enforcement in Religious and Non-Profit Sectors: The judgment highlights the need to protect intellectual property rights even in religious and charitable organizations.

3. Case Precedent: The court referenced prior judgments, including ITC Ltd. vs. Rani Sati Foods Pvt. Ltd. and Texmo Industries vs. Texmo Aqua Engineering Pvt. Ltd., to establish the principles for well-known trademarks.

This case emphasizes the importance of intellectual property protection for organizations with significant cultural and commercial influence, ensuring that their trademarks are safeguarded against misuse and dilution.