Our Associate, Parth Agrawal discusses “ISKCON declared as well-known trade mark by Bombay High Court”
A well-known brand is not something which is built over night but is the result of a proprietor’s relentless investment in its brand to build a reputation and goodwill in their mark. These investments in the marks not only include the investment in publicizing or advertising the marks but also include the pro-active actions taken by proprietors to protect their marks from being unauthorizedly used by third party. As a result of such investment and actions, the marks which enjoys unquestionable reputation in the market are awarded the status of “well-known marks”. So to say, the protection is to be granted to such marks, not only in respect of goods and services in which they are used, but also in respect of unrelated goods and services, in order to safeguard the mark from third party who desires to take undue advantage of such immense goodwill and reputation.
Recently, in International Society for Krishna Consciousness (ISKCON) vs. Iskcon Appaeral Pvt. Ltd. & Anr., the plaintiff filed a suit for permanent injunction restraining the defendants from infringing the plaintiff’s registered trademarks, passing off and sought a decree of declaration that the plaintiff’s trade mark ISKCON as a ‘well-known trade mark’ in India. Earlier this year, the Bombay High Court granted ad-interim injunction restraining the defendant from using the mark ISKCON. The defendants in the recent hearing stated that they have changed the name of the company to Alcis Sports Pvt Ltd. and submitted an undertaking stating that the they will not use the trade mark ISKCON by itself or as a part of the trade mark or in any manner whatsoever including the impugned expression “formerly known as ISKCON”.
The Bombay High Court, noted that, the mark ISKCON was derived from the plaintiff’s name, i.e. I from International, S from Society, K from Krishna and Con from Consciousness and is a coined mark which deserves highest degree of protection. Further, noting the documents placed on record by the plaintiff, the court observed that, the mark ISKCON has been in continuous use in India since at least 1971. The court also noted that the plaintiff has been vigilant in taking proactive steps in initiating proceedings before various forums against the misuse of its trade mark ISKCON. The court held that, the documents evidently show that the trade mark ISKCON has acquired immense and long-standing reputation and goodwill throughout India and it is associated with the plaintiff and none else. Given this, the court held, that the trade mark ISKCON satisfies the requirements and tests of a well-known mark and consequently declared the ISKCON mark to be a well-known mark in India.
It is pertinent to note that, in recent time, neither Indian courts nor the Trade Mark Registry, or the Intellectual Property Appellate Board are shying away in declaring marks that satisfy the requirements to be well-known marks. Recently, Intellectual Property Appellate Board declared the sporting brand YONEK to be well-known. Further, the mark PULSE was also declared as well-known by Delhi High Court. This is certainly a welcome development wherein marks which deserve the highest degree of protections are being awarded well-known status.