What are the Categories of a ‘Well-Known’ Mark?

what are the categories of a well-known Mark?

In IKCON v. Iskcon Apparel Pvt. Ltd and ors. in Commercial IP Suit (L) No. 235 OF 2020 decided on 26th, June, 2020, the Bombay high court declare the International Society for Krishna Consciousness (ISKCON) as a “well-known” Mark.

Factual Matrix

The plaintiff has filed a trademark infringement suit against the defendant clothing company seeking “permanent injunction” for the use of the mark “IKCON”, passing off, and other reliefs.

The plaintiff has also pursued for the decree of declaration, the said mark is “well-known” trademark in India.

Keeping in view the above contention made by the plaintiff, the court granted an interim relief against the defendant on 6th march, 2020.

Further, the defendant submitted that the “iskcon Apparel Pvt. Ltd” has changed its name to Alcis Sports Private Limited” and also submitted an “affidavit-cum-undertaking” stating the defendant can no longer use the mark in the future.

However, the plaintiff also argued to declare the said mark as “well-known” trade mark according to “Section 11(6) and 11(7) of the Trade Marks Act, 1999”

ISKCON is a well-known organisation with headquarters in New York, which was established in 1966.

The label ISKCON was created by combining the letters “‘I’ from International, ‘S’ from Society, ‘K’ from Krishna, and ‘Con’ from Consciousness to form the Plaintiff’s name”. The Plaintiff is known as “ISKCON” in the community.

He stated that the label ISKCON is being used on all promotional content, in addition to being the shortened name of the Petitioner.

The said mark containing ISKCON as a unique, and notable component of various products.

He said that there are currently over “500 ISKCON monuments worldwide, 65 environmentally groups, and 110 food premises and facilities, including in India.”

Since at least 1971, the Plaintiff has been regularly, and uninterruptedly using the said label ISKCON in connection with commodities.

The Plaintiff also owns the “www.iskcon.org” domain name, which has been up and running since 1994.

He argued that the Plaintiff’s trade mark ISKCON’s reputation, and prestige are no longer limited to specific products, but rather include a wide variety of categories.

Issues

Whether the said mark be recognised as a “well-known” mark?

“Section 11 of the Trademark Act of 1999” protects “well-known” trademarks as well as marks that are authorized in due diligence. The register will evaluate the following factors to decide whether the mark is “well-known” or not: [1]

  • That the general public is aware of the stated mark and is able to distinguish between the supposed “well-known” mark and the recognition achieved via marketing.
  • The duration, scope, and geographical region of any trademark usage or promotion.
  • The track history of effective enactment of the trademark’s rights, particularly the amount whereby the mark has been recognised as a “well-known” trademark by any Tribunal or Registry under that past record.
  • The number of current or future buyers of the items and/or services.
  • The number of people participating in the delivery information of products or services.
  • The track history of effective enactment of the trademark’s claims, particularly the amount whereby the trademark has indeed been recognised as a “well-known” trademark by any Tribunal or Registry under that past record.
  • The quantity of current or future buyers of the items and/or services.
  • The number of people participating in the delivery information of products or services.

Is there a violation of the right of the plaintiff after defendant change the name of its business?

Despite the fact that the Defendant had changed the name of the company to “Alcis Sports Pvt Ltd.”, would cause consumers to infer that they were formerly linked with the Plaintiff. Furthermore, the name “ISKCON” was still utilised in all of the Defendant’s products, leading consumers to infer that the Defendant is linked with the Plaintiff. This is certainly an infringing case because the Plaintiff is not only protected, but also worldwide recognised and meets the conditions for registration as a “well-known” mark.

Precedents referred

ITC Ltd. v. Rani Sati Foods Pvt. Ltd. [2]

Due to the plaintiff’s high, rigid, and unyielding standards of quality applied to their Atta goods, the Madras High Court granted an injunction prohibiting the respondent from using the distinct trademark dilution “AASHIRVAAD” as well as the trademark “AASHIRVAAD” and which include “Aashirvaad Trade Dress” which is highly common and in demand in India, as well as other nations around the globe such as Australia, Singapore, Canada, and the United States of America.

Because of the company’s long and consistent presence in the sector, “ASSHIRVAAD” become a “well-known” brand.

Texmo Industries v. Taxmo Aqua Engineering Pvt. Ltd. and Ors [3]

Texmo Industries, the applicant, filed a complaint seeking preliminary injunctions and instructions against the respondent, including a statement that their trademark was well-known. The parties were directed to mediation and had reached an agreement on all matters, with the Respondent not contesting the well-known trademark charge.

The mark was categorised under “section 2(1) (zg) of the Trade Mark Act, 1999”. Further, the settlement arrangement is inclusive of the decree that makes the plaintiff’s brand “well-known”, according to “Article 6bis of the Paris Convention for the Protection of Industrial Property”.

Findings of the Court

  • The Defendant does not deny that “ISKCON” is a “well-known” trade mark, as shown by the aforementioned assertions.
  • The word “ISKCON”, it did not exist, before the plaintiff acknowledgement.
  • It is undeniably deserving of the highest level of defence that it is a trademark that was created by the Plaintiff and is solely affiliated with him.
  • The trade mark of the Plaintiff “ISKCON” has a huge and lengthy credibility in India and around the world.
  • In addition, the Plaintiff has faithfully safeguarded and protected its interests in the aforementioned trade mark. “ISKCON” is a Hindu spiritual body.

Judgement

Regarding the first point, it is obvious that the plaintiff’s rights have been infringed upon, as the phrase “formerly known” as “Iskcon Apparel Pvt Ltd.” may lead people to conclude that they were previously affiliated with the Plaintiff.

Regarding the second point, it is clear that the Plaintiff’s trademark “ISKCON” is widely recognised.

The Plaintiff’s trademark’s success “ISKCON” is active not just in India but also in other nations, and the Plaintiff is using its trade mark in those countries. “ISKCON” has taken many steps against numerous violators in the past, but has done so freely, extensively, and consistently.

The trade mark of the plaintiff ISKCON meets the standards and tests for a “well-known” trade mark set out in “Sections 11(6) and 11(7) of the Trade Marks Act of 1999”, as well as other provisions.

Analysis

The Hon’ble High Court issued its decision based on four essential Trademark Law precepts, which are outlined below:

Plaintiff’s Trademark ISKCON is well recognised.

The Hon’ble High Court determined that ISKCON is a well-known trademark in India, enjoys international popularity, repute, and goodwill, and is widely accepted. According to “Section 2(1)(zg) of the Trade Marks Act of 1999”, a “well-known” trademark is one that has become important to the public in relation to certain goods & services. It was apparent that no other organisation has previously claimed ISKCON, thus no one else may use this registered trademark; and the Plaintiff has the sole rights to use it. Following or are loyal to this religious group may purchase things out from defendant’s site assuming they are in the authentic ISKCON and end up being scammed out of dollars. [4]

Worldwide popularity of Trademark

According to “Section 11(6) of India’s Trade Marks Act, 1999”, a trademark is classified as well-known if it is important enough in a specified region and the brand has been advertised for any certain length in a geographical region. There is a track of effective protection of international pertaining to particular trademark. ISKCON has grown in popularity among the general population, even outside of India. The Plaintiff created several Centers throughout North America, South America, Malaysia, the Philippines, and several other countries. As a result, the Court determined that the Plaintiff meets the standard outlined in the Section, and the defendant is not permitted to use the aforementioned trademark.

Plaintiff is using the said Trademark from the start

According to “Section 11(7) of India’s Trade Marks Acts, 1999”, a trademark can be regarded well-known dependent on the quantity and length of its usage, as well as whether it was used for publishing and ads from its inception. [5] The Plaintiff was able to efficiently produce evidence claiming that the ISKCON were being used by them ever since inception and was very “well known” whenever the defendant utilised it. The first ISKCON temple was built in India in 1971, and the name has been used since thereafter.

Plaintiff Claims for infringement in the past

The documentation provided to a tribunal at the plaintiff’s trial also stated that there’s been several alleged infringers in the past. It was established in court that the Plaintiff had previously pursued legal proceedings against numerous defaulters on many platforms, proving their control over the mark and the products offered under the said name and those decisions also made news because they protected the views of a religious group and barred use of its trademark to market things that had nothing to do with it.

To make a profit, the defendant used the name of a “well-known” trademark. The religious organisation is the only one that has the authority to propagate its ideology through its goods. Because of the defendant’s use of it, the Plaintiff’s adherents may believe that their items belong to them. They can be duped in this manner. Ultimately, it was determined that the characteristics necessary to be considered for a “well-known” trademark under “Sections 11(6) and 11(7) of the Trade Marks Act, 1999” are met in the current case.

When a firm or organisation establishes a registered trademark, any other firm that uses an identical trademark infringes or violates it. Courts consider a number of considerations when determining whether or not a trademark has been violated. In this case, too, the verdict was reasonable, and the corporation was finally forced to alter its name.

References

  1. Aishani Singh, How to recognise well-known Trademarks in India, 28th May 2021, 10:01 AM, https://www.mondaq.com/india/trademark/918306/how-to-recognize-well-known-trademarks-in-india, see also: https://www.synclegal.co.in/index.php/blog-new/25-case-summary-international-society-for-krishna-consciousness-iskcon-vs-iskcon-apparel-pvt-ltd-and-ors
  2. Commercial IP Suit (L) No. 1465 of 2018
  3. C.S. No. 50 of 2017
  4. Castrol Limited & Anr. v. Mahendra Automobiles & Ors., CS(OS) No. 1369/2006 & Make My Trip (India) Pvt. Ltd. v. Make My Tours Pvt. Ltd. & Ors., CS(OS) No. 4039/2014
  5. Essel Propack Ltd v. Essel Kitchenware Ltd. And Anr., Civil Suit No. 272 of 2010
  6. Bare Act, Trade Mark Act, 1999

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