Registering a well-known religious Trademark
When you become famous, being famous becomes your profession.
The innovative advertisements of famous trademarks we come across remind us of
the image they have created in our minds and the quality of the respective
products or services they reflect. Millions are spent by the owners of such
marks to build their reputation and maintain their popularity in this
competitive globalised world.
At times, proprietors of such trademarks spend a large amount of money to prove
that their marks are indeed well-known or famous before a competent court. The
incentive to establish a mark as well-known is, but obviously, to strengthen the
IP protection especially against malicious infringers.
Primarily, what is
expected by the owners of famous marks is that their marks are not copied,
identically or similarly, in respect of their own goods and services of interest
or in respect of other goods and services, by intentional and opportunist
persons to derive illegal profits. The flip side from Indian perspective was
that establishment of well-known trademark could be done only through
adversarial proceedings before a court.
On the very fine day of 28th of June, 2020. The hon'ble Bombay High Court passed
as very confined decree which now ceases the Mark ISCKON Apparels
hence, by that action retrospectively granted the ‘long established' ISCKON
(International Society for Krishna Consciousness) the renouncement of
The well-known trademark as defined under Section 2(1) (zg) of the Trade Marks
Act, 1999 provides:
well-known trademark, 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
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.
International Society for Krishna Consciousness (ISKCON) ...Plaintiff
Iskcon Apparel Pvt. Ltd. & Anr.
In or around the year 1966, the Plaintiff was founded by the Late Acharya, His Divine Grace A. C. Bhaktivedanta Swami Prabhupada, when he started
the Krishna Consciousness Movement in the name and style of International
Society for Krishna Consciousness (ISKCON) in New York, United States of
America. Within a short span of time, the said movement spread all over the
world and gained immense popularity and/or name and fame.
The acronym / term /
mark ISKCON was derived and/or adopted from the Plaintiff's name, i.e. I from
International, S from Society, K from Krishna and Con from Consciousness. The
Plaintiff is commonly known as ISKCON. He The mark ISKCON, apart from being
the abbreviated name of the Plaintiff is also used and/or appears on all the
The Plaintiff has made applications/secured registrations
in respect of the trade mark ISKCON and/or marks containing ISKCON as one its
leading, essential, distinctive and prominent feature in respect of various
goods/services/classes. There are more than 600 ISKCON temples / 65 eco-farm
communities, 110 Vegetarian Restaurants and centers all over the world including
in India. In India, the first ISKCON temple was constructed in the year
The Plaintiff also owns the domain name and/or website www.iskcon.org
which has been operational since the year 1994 and provides detailed information
about the Plaintiff and/or the activities carried on by the Plaintiff under the
said mark trade mark ISKCON. On the other hand, respondent is carrying a
business naming ‘ISKON Apparels
'. The Defendant's website, i.e. aaa.alcissports.com.
It is stated that a perusal of the said website shows that
Defendant No.2 may have changed its name from Iskcon Apparel Pvt. Ltd. to Alcis
Sports Pvt. Ltd. but is still using the expression Formerly known as Iskcon
Apparel Pvt. Ltd on its website.
The name of the Defendant No.1 has changed to Alcis Sports Pvt. Ltd. (Defendant
No.2), but the use of the expression Formerly known as Iskcon Apparel Pvt.
is still in use on its website and eventually amounts to
infringement of the Plaintiff's trademarks and passing off considering the
registrations secured and reputation acquired by the Plaintiff in the said ISKCON marks. Firstly, on 6 March, 2020 the case was been entertained under the
Single bench of Bombay Highcourt, and then after adjourning with pending
hearing, on 26th June 2020 the final hearings were held.
It is stated that in India, the first ISKCON temple was constructed in the year
1971. It is stated that presently, there are more than 600 ISKCON temples / 65
eco-farm communities, 110 Vegetarian Restaurants and centers all over the world
including in India which preach and / or spread and / or propagate the
philosophy, teachings and principles of Lord Krishna Consciousness.
The Plaintiff has filed the present suit seeking permanent injunction
restraining the Defendants from infringing the Plaintiff's registered
trademarks, passing off and other reliefs. The Plaintiff has also sought a
decree of declaration that the Plaintiff's trade mark ISKCON is a ‘well-known
trade mark' in India.
I was submitted that the Plaintiff has been diligently safeguarding its rights
in the said trade mark ISKCON and has successfully initiated proceedings before
various forums against the misuse of its trade mark ISKCON as per details set
out in paragraph 19 of the plaint.
The recognition, reputation and goodwill of the Plaintiff's said trade mark ISKCON is no longer restricted to any particular goods/services/activities but
pertains to a diverse range of categories. He submitted that the Plaintiff's
said trade mark ISKCON has come to enjoy a personality that is beyond the scope
of mere products/services rendered under the trade mark ISKCON by the Plaintiff.
Furthermore, the Plaintiff has been diligently safeguarding and protecting its
rights in the said trade mark ISKCON and has initiated proceedings before
various forums against the misuse of its trade mark ISKCON and been successful
in enforcing its rights in its mark ISKCON.
It is stated that a perusal of the said website shows that Defendant may have
changed its name from Iskcon Apparel Pvt. Ltd. to Alcis Sports Pvt. Ltd. but is
still using the expression Formerly known as Iskcon Apparel Pvt. Ltd on its
Finally, Hon'ble Justice. B. P. COLABAWALLA, the defendant's council gave an
undertaking that the Defendants will not use the trade mark / name ISKCON by
itself or as a part of the trade mark / name or in any manner whatsoever
including the impugned expression Formerly known as ISKCON. A copy of the said
Affidavit-cum-Undertaking is e-filed by the Plaintiff's Advocate on 24th June
2010 and the same is on record.
Courts Final Discretion:
The court relied upon the council of Plaintiff and pronounced that:
It is clear
that ISKCON is a coined trade mark of the Plaintiff, that is to say that the
said term ISKCON did not exists prior to the Plaintiff's adoption and use of the
same. Since it is a coined trade mark which is associated exclusively with the
Plaintiff, it undoubtedly deserves the highest degree of protection.
the court evidently proceeded that:
- the Plaintiff's trademark ISKCON has wide acceptability;
- the popularity of the Plaintiff' s trademark ISKCON extends not only in
India but in other countries as well;
- the Plaintiff is using its trade mark ISKCON openly, widely and continuously
since the beginning; and
- the Plaintiff has taken several actions against various infringers in
Therefore, of the opinion that Plaintiff's trade mark ISKCON satisfies the
requirements and tests of a well-known trade mark as contained in Sections
11(6), 11(7) and other provisions of the Trade Marks Act, 1999.
In view thereof, it was no difficulty in holding that the Plaintiff's trade mark ISKCON is a ‘well-known' trade mark in India within the meaning provided in
Sections 2 (1)(zg) of the Trade Marks Act, 1999.
A well-known trade mark is capable of distinguishing itself from an ordinary
trade mark. While any established trade mark may be known in its limited
category of goods and services in which it has built its goodwill, a well-known
trade mark is known well to the substantial segment of the public, i.e., beyond
the category of goods or services it deals with.
The degree of reputation of a well-known trade mark is so vast that its
knowledge and reputation has crossed the limitation of its actual goods or
services to other unrelated goods and services. Therefore, declaration of a mark
as well-known trade mark is of considerable importance to any business entity.