Mohd Rameez Raza & Shereen Abdin, Students, Faculty of Law, Integral University, Lucknow
Introduction
In layman terms, a trademark can be any name, sign, design, logo, or symbol, which helps identify one enterprise’s products from another; but as per Section 2 (zb) of Trade Marks Act the Indian legal sphere defined trademark as an intellectual-property through which an owner gain a statutory right to guard against infringement. In India, the Trade Marks Act, 1999[i], provides statutory provisions for the same.
Recently, a case[ii] of trademark infringement came into the news, where an apparel brand adopted the name ‘Iskcon’ for their company Iskcon Apparel Pvt. Ltd. (defendant) which similar to ‘ISKCON’, which stands for International Society for Krishna Consciousness (Plaintiff), a religious organisation founded in 1966. Initially, the Plaintiff approached the defendant with notices and summons to stop using their registered trademark. Still, no response was received from the defendant, and then the Plaintiff eventually had to file a lawsuit of infringement against the defendant. The Plaintiff alleged that its registered trademark had been infringed. After the allegation, the defendant switched to a new name Alcis Sports Pvt. Ltd. but continued to use the label ISKCON.
The Judgement: An Analysis of the Four Commandments
Later in June 2020, the Bombay High Court decided that; ISKCON is a registered, and a well-known trademark[iii]; of the Plaintiff, and the defendant cannot use it as their trademark as per the Trade Marks Act, 1999. The Hon’ble High Court accepted the lawsuit since ISKCON was coined by the plaintiff nobody before this creation nobody used the same. According to the Court, the trademark deserved the highest degree of protection; and it is continuous and exclusive use to distinguish the products and services from others. The purpose of the lawsuit was to safeguard the Plaintiff’s rights and prevent any further trademark infringements. The Hon’ble High Court gave this judgement based on four important commandments of the Trademark Law, which are elucidated below:
i. Plaintiff’s Trademark ISKCON has wide acceptability
The Hon’ble High Court established that ISKCON is a well-known trademark in India and enjoys worldwide popularity, reputation, and good-will, and it has wide acceptability. According to Section 2(1)(zg) in the Trade Marks Act, 1999, a well-known trademark is the one which has become significant to the public in regards to particular goods and services. Use of that trademark for any other goods or services may be linked as a direct connection between the people who first used the trademark and the ones who later adopted it.
In the case of, Texmo Industries vs Taxmo Aqua Engineering Pvt Ltd & Ors[iv], it was held that,
“if a mark satisfies the requirements and tests of a well-known mark then it is entitled to be categorised as such in terms of Section 2(1)(zg) of the Trade Marks, Act 1999.”
It was clear that no organisation has previously claimed ISKCON, and hence, no one can further use this registered trademark; and the Plaintiff has the exclusive rights to use it. The people who follow or are devoted to this religious organisation may buy products from the defendant’s website believing that they belong to the original ISKCON and end up getting duped for money.
ii. The popularity of the Trademark is worldwide
According to Section 11(6) of the Trade Marks Act, 1999 of India, a trademark is designated to be well-known if it is relevant enough in a particular area and the advertising of the trademark has been done for any specific duration in a geographical area. There exists a record of the successful enforcement of rights related to that trademark.[v]
ISKCON has become well-renowned amongst the public, even outside of India. The Plaintiff established many Centres in North America, South America, Malaysia, and the Philippines, and many more countries. Hence, the Court held that the Plaintiff satisfies the test laid in the Section, and the defendant cannot use the said trademark.
iii. The Trademark is in use since the beginning
According to Section 11(7) of the Trade Marks Acts, 1999 of India, a trademark can be considered as a well-known trademark based on the extent and duration of its use, as well as if it has been used for publication and advertisements since the beginning.[vi]
The Plaintiff was successfully able to present pieces of evidence to claim that the ISKCON had been used by them since the beginning and was already well known when the defendant used it. The first ISKCON temple was constructed way back in 1971 in India and had been using the name since then. It currently has over 600 temples worldwide, including India making it questionable for the defendant to have used the name and feign ignorance over it.
iv. The Plaintiff has already taken several actions in the past
The record presented to the court during the hearing of the lawsuit also mentioned that there had been many infringers in the past It was proven to the court that the Plaintiff had sought legal actions against the many infringers in the past, on multiple forums establishing their authority over the trademark and the goods/services sold using the trademark name. The Plaintiff had also diligently initiated the lawful proceedings for protecting its trademark, as proved in court to prevent the trademark’s misuse, and those judgments also made headlines as it upheld a religious community’s sentiments and prevented the misuse of its name for selling products nowhere associated with it.
Conclusion
The defendant adopted the name of a well-known trademark to gain profit. The religious organisation preaches its philosophy through its products and is the only one who has the right to do so. Due to its use by the defendant, the Plaintiff’s devotees may buy their products, thinking that they belong to them. In this way, they can be scammed. Thus, it was held that the parameters that are required to be taken into consideration for a well-known trademark as per Section 11(6) and 11(7) of the Trade Marks Act, 1999 are fulfilled in the present case.
The court also cited, ITC Limited v. Rani Sati Foods Private Limited[vii] in the judgement where the Madras High Court granted an injunction restraining the defendant therein from using the distinctive ‘AASHIRVAAD’ trade dress and the ‘AASHIRVAAD’ trademark on account of the high, stringent and uncompromising standards of quality as applied by the Plaintiff about its Atta products bearing Aashirvaad Trade Dress, the same is known for its superior quality and efficacy and are extremely popular and highly demanded in India and several countries world over such as Australia, Singapore, Canada and the United States of America. It was further stated that due to prolonged and sustained presence in the market coupled with substantial and uninterrupted investments made in the marketing and promotion, the Plaintiff’s trademark ‘AASHIRVAAD’ and the Plaintiff’s various ‘AASHIRVAAD’ atta packaging including Aashirvaad Trade Dress had become a well-known trademark.
Whenever any business or organisation is set up and adopts a registered trademark, if any other company uses an identical trademark, they are infringing or violating it. Courts take up various factors while deciding whether the mark was infringed or not. In this case, as well, the judgment was just, and the company had to change its name eventually.
[i] Trade Marks Act, 1999. [ii] International Society for Krishna Consciousness (ISKCON) v. ISKCON Apparel Pvt. Ltd. & Anr., (2020) SCC Online Bom 729. [iii] Devika, “ISKCON” declared as a well-known trademark: Satisfies tests & requirements laid down in Trade Marks Act, SCC ONLINE, available at https://www.scconline.com/blog/post/2020/06/29/bom-hc-iskcon-declared-as-a-well-known-trade-mark-satisfies-tests-requirements-laid-down-in-trade-marks-act/, last seen on 11/07/2020. [iv] Texmo Industries v. Taxmo Aqua Engineering Pvt Ltd & Ors, C. S, No. 50 of 2017 (High Court of Judicature at Madras, 11/12/2017). [v] Castrol Limited & Anr. v. Mahendra Automobiles & Ors., CS(OS) No. 1369/2006 (High Court of Delhi, 18/08/2011); See also: Make My Trip (India) Pvt. Ltd. v. Make My Tours Pvt. Ltd. & Ors., CS(OS) No. 4039/2014 (High Court of Delhi, 23/12/2014). [vi] Essel Propack Ltd v. Essel Kitchenware Ltd. And Anr., Civil Suit No. 272 of 2010 (High Court of Judicature at Bombay, 11/03/2016). [vii] ITC Limited v. Rani Sati Foods Pvt. Ltd., Comm. IP Suit (L) No. 1465 of 2018 High Court of Judicature at Bombay, 03/12/2018).