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ISCKON: A well known Trademark

Registering a well-known religious Trademark
When you become famous, being famous becomes your profession.-James Carville

Abstract
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.

Introduction
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 and hence, by that action retrospectively granted the ‘long established' ISCKON (International Society for Krishna Consciousness) the renouncement of ‘well-known' trademarks.

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.

Courts Contention
International Society for Krishna Consciousness (ISKCON) ...Plaintiff
vs
Iskcon Apparel Pvt. Ltd. & Anr. ...Defendants

Facts:
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 advertising material.

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 1971.

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.

Dispute:
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. Ltd 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.

Plaintiffs case:
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.

Defendant operation:
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 website.

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.

Further, the court evidently proceeded that:
  1. the Plaintiff's trademark ISKCON has wide acceptability;
  2. the popularity of the Plaintiff' s trademark ISKCON extends not only in India but in other countries as well;
  3. the Plaintiff is using its trade mark ISKCON openly, widely and continuously since the beginning; and
  4. the Plaintiff has taken several actions against various infringers in the past.

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.

Conclusion
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. 

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