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- Trademark Infringement
- Trademark Litigation
According to Investopedia a trademark is any name, sign, design, logo, or symbol that serves to distinguish the goods of one business from those of another[i]. However, Section 2(1)(zb) of the Trade Marks Act, 1999, defines ‘trademark’ as a mark which is capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others, and may include the shape of goods or their packaging and combinations of colours.[ii] By registering a trademark, a company or a person prohibits others from using their name, logo, slogan, product design, or packaging without their authorisation. Furthermore, they limit the use of markings that may easily be mistaken with existing ones. If a company’s products and services are identical to those of another company whose trademark has already been registered, the company is prohibited from utilising the trademark.
[Image Sources : Shutterstock]
International Society for Krishna Consciousness (ISKCON), most often known as the Hare Krishna movement or Hare Krishnas is a religious organisation founded by A. C. Bhaktivedanta Swami Prabhupada in New York City in 1966.[iii]
Facts Of The Case
In this case, the Plaintiff, ISKCON, alleged that an online apparel brand named ISKCON Apparel Pvt. Ltd (defendant) has infringed their trademark rights. The Plaintiff claimed that its followers are given free or heavily discounted copies of Products such as books, magazines, calendars, greeting cards, apparels, etc. with the ISKCON trademark emblem. In February of 2020, the Plaintiff while conducting internet research found the infringing material.
The Plaintiff further stated that, initially they attempted to have the defendant cease using their trademark by serving them number of notices. However, the later did not pay any heed to the notices served and the plaintiff was forced to file a case for infringement. Soon after the allegations, the Defendant renamed its company from Iskcon Apparel Pvt. Ltd. to Alcis Sports Pvt. Ltd., but preserved the phrase “previously known as Iskcon Apparel Pvt. Ltd.” in their websites and very prominently used the brand name ISKCON in all their products.
- Whether the trademark of the Plaintiff a well-known one?
- Whether the trademark rights of the Plaintiff are infringed even after the Defendant has changed the company’s name?
Laws & Sections Involved
- Section 2(1) (zg) of the Trademarks Act, 1999 – Defines well-known trade mark.[iv]
- Section 11(6) and Section 11(7) of the Trademarks Act, 1999 – Talks about the ingredients of well-known trade mark.[v]
- Section 135 of the Trademarks Act, 1999 – Talks about reliefs that can be granted by a court in case of trade mark infringements.[vi]
The counsel appearing for the Plaintiff most humbly submitted before the court that the ISKCON trademark is a well-known one, and the plaintiff is due a declaration to that effect since ISKCON was established as a Krishna Consciousness Movement and that the organisation quickly went worldwide, and now has its presence in countries all over the globe, including India and they have used the acronym ISKCON in practically every context. He added that since 1994, the organization’s history has been documented at its own registered domain.
In addition, the organisation gives out or sells books and clothing to its followers, all of which include the ISKCON logo.
It was also submitted by the counsel that the organisation has been investing heavily in advertising and marketing its services and products since 1971, and that the name of the organisation itself is a registered trademark.
The counsel appearing for the Defendant most humbly submitted before the court that ISKCON Apparels Pvt. Ltd. was no longer in existence since it had adopted Alcis Sports Private Limited as its new name. He further submitted that the Defendant has already filed an affidavit-cum-undertaking on June 23, 2020, promising that it would stop using the ISKCON trademark in its business activities.
The Hon’ble Single Judge bench of Justice B. P. Colabawalla ruled that the use of trade name ISKCON by the Defendant was deliberate with a motive of trading upon the reputation developed by the Plaintiff in the aforementioned trade mark. The court in its ruling referred to ISKCON’s services, reputation, and goodwill in India to conclude that the trademark is “well-known” in the nation. The court further held that although the Defendant has changed its name to Alcis Sports Pvt. Ltd., the use of the expression “Formerly known as Iskcon Apparel Pvt. Ltd” on its website constitutes trademark infringement and passing off because of the registrations obtained and goodwill built up by the Plaintiff in the aforementioned ISKCON marks. The court also ruled that the term “ISKCON” was not in use prior to the Plaintiff’s registration of the trademark. The Plaintiff’s ISKCON trademark deserves strong legal protection since it is uniquely linked with the plaintiff. In light of this, the court ruled that Plaintiff alone is entitled to use the trademark and prohibited the Defendant from making any use of the Trademark. including the expression “formerly known as Iskcon Apparel Pvt Ltd”.
A famous trademark may easily be distinguished from a common trademark. While any reputable trademark may have name recognition just among consumers interested in the specific kind of products or services for which it was originally developed, the public at large will likely be familiar with a famous trademark regardless of the products or services it sells. A trademark’s official recognition as well-known trade mark is crucial for any company’s success.
In order to make profit, the Defendant stole the name of a famous brand. The religious group ISKCON is the only one permitted to promote its beliefs using its wares as a platform. If the Defendant uses the plaintiff’s trademark, followers of the Plaintiff can be fooled into believing the Defendant’s goods are officially sanctioned by the Plaintiff and hence purchase them. Con artists may take advantage of them in this manner. Accordingly, it was decided that the ingredients of a famous trademark as set out in Sections 11(6) and 11(7) of the Trade Marks Act, 1999 are satisfied in the case in discussion.
The court referred to the case of ITC Limited v. Rani Sati Foods Private Limited[vii], in which the Madras High Court issued an injunction prohibiting the defendant from using the distinctive ‘AASHIRVAAD’ trade dress and the ‘AASHIRVAAD’ trademark due to the high, stringent, and uncompromising quality standards applied by the plaintiff to its Atta products bearing the Aashirvaad Trade Dress.
A trademark infringement occurs when one firm uses a mark that is confusingly similar to another company’s registered trademark. When evaluating whether or not a trademark has been violated, the court considers a number of issues. The verdict in this case was fair, and the corporation did end up changing its name.
Author: Saptadip Nandi Chowdhury, a student at SVKMs NMIMS, Kirit P. Mehta School of Law, Mumbai, in case of any queries please contact/write back to us via email to firstname.lastname@example.org or at Khurana & Khurana, Advocates and IP Attorney.
- Trade Marks Act, 1999.
- Sakshi Rastogi, Infringement of Trademarks, 4 IJLMH 1392, (2009), https://www.ijlmh.com/paper/infringement-of-trademarks/
- International Society for Krishna Consciousness (ISKCON) v. ISKCON Apparel Pvt. Ltd. & Anr., (2020) SCC Online Bom 729.
- Hindustan Times, https://www.hindustantimes.com/mumbai-news/apparel-firm-tells-hc-it-will-not-use-iskcon-in-name-or-trademark/story ffJnvPjRuWVjORBVqTxfHO.html (Last Visited Oct. 22, 2022).
[i] Carla Tardi, Trademark, Investopedia, (March 23. 2022), https://www.investopedia.com/terms/t/trademark.asp
[ii] Trade Marks Act, 1999, S. 2(1) (zb), No. 47, Acts of Parliament, 1999 (India).
[iii] ISKON, https://www.iskcon.org/about-us/what-is-iskcon.php (Last Visited Oct.22, 2022)
[iv] Trade Marks Act, 1999, S. 2(1) (zg), No. 47, Acts of Parliament, 1999 (India).
[v] Trade Marks Act, 1999, S. 11(6) & 11(7), No. 47, Acts of Parliament, 1999 (India).
[vi] Trade Marks Act, 1999, S. 135, No. 47, Acts of Parliament, 1999 (India).
[vii] ITC Limited v. Rani Sati Foods Private Limited [Commercial IP Suit (L) No.1465 of 2018]