International Society For Krishna Consciousness (ISKCON) Vs. Iskcon Apparel Private Limited And Anr.

By: Khushi Bansal, A student at University Institute of Legal Studies, Panjab University, Chandigarh

Headline of the Article

The ISKCON Case (2020)

To the Point

Citation of the Case: Commercial IP Suit (L) No. 235 of 2020

Name of the Court: Bombay High Court

Appellant in the Case: International Society for Krishna Consciousness (ISKCON)

Respondents in the Case: Iskcon Apparel Private Limited and Anr.

Bench: Justice B.P. Colabawalla

Judgment Date: 26 June 2020

Abstract

Larry Harvey, an American artist, philanthropist, and activist, has very rightly quoted: “We don’t use the trademark to market anything. It’s our identity.” The quote encapsulates the essence of trademarks as more than being merely commercial assets, stating that they are the symbols of identity and values. This echoes in the cases related to the infringement of intellectual property rights, where trademarks are integral aspects of an organization’s identity and reputation and not merely tools used for marketing.

In simple words, a trademark is a unique sign, symbol, design, or expression that distinguishes the products or services of a particular source from those of others. Trademarks are not only used by businesses to identify and differentiate their goods or services from those of competitors, but they also help consumers easily identify and select products or services they actually want. In the present case, ISKCON Apparels used the trademark of ISKCON, a religious organization founded in 1966 devoted to Krishna Bhakti, without any authorization. In this way, they violated ISKCON’s trademark rights by using the organization’s name to sell their products without permission, hence this case.

Background and Facts of the Case

The International Society for Krishna Consciousness (ISKCON), which was established in 1966 in New York City, USA, is a religious body with a global presence, having several temples and restaurants in different countries. The organization also offers a range of goods, like religious books, magazines, cards, calendars, and clothing, bearing their trademark ISKCON. These products are circulated among the devotees of ISKCON (the plaintiff) for free, or people buy these products at subsidized rates.

In February 2020, while conducting an online search, the ISKCON members discovered that an apparel brand named ISKCON Apparel Pvt. Ltd. (the defendant) adopted the acronym of their organization’s name to sell its products on an online platform by misleading the people in the name of ISKCON. The plaintiff repeatedly approached the defendant with notices and summons a number of times, asking them to stop using their registered trademark, but the plaintiff received no response from the other party. Eventually, the plaintiff decided to knock on the doors of the Indian judiciary to seek justice.

After the allegation, the defendant switched its name from ‘ISKCON Apparel Pvt. Ltd.’ to ‘Alcis Sports Pvt. Ltd.’ but continued to use the label of ISKCON on its products, which would somehow mislead the public that the defendant is still associated with the plaintiff. At the end, ISKCON had to file a commercial lawsuit against ISKCON Apparel Pvt. Ltd. for the infringement of its trademark rights.

Issues of the Case

The following two major issues were to be adjudicated by the court of law:

Whether the plaintiff’s trademark is to be recognized as a well-known trademark?
Whether the defendants are still liable after changing the name of their company?

Contentions by the Parties

The plaintiff, ISKCON, contended that their ‘ISKCON mark’ is inherently distinctive and deserves protection of its identity. They also argued that the mark has built up significant goodwill and reputation over time. The ongoing use of the ‘ISKCON mark’ for clothing, even though the company has changed its name, would mislead the people of the plaintiff’s association with the defendant. It was also mentioned that, despite the changed name, it was reasonable for people to believe the association between plaintiff and defendant in the past, which was not true, leading to the infringement of the plaintiff’s trademark rights.

On the other hand, the respondent defended itself by contending that ISKCON Apparels Pvt. Ltd. had been changed to Alcis Sports Pvt. Ltd. and that the former one was no longer in existence. The company also argued that an affidavit-cum-undertaking had already been submitted on 23rd June, 2020, stating that the company would not further use the trademark ISKCON for its trade purposes.

Judgment of the Case

In June 2020, the Bombay High Court declared ISKCON a registered and well-known trademark and held that it was illegal for the defendant to use the trademark of ISKCON as per the Trade Marks Act, 1999. Justice Colabawalla further stated that the acronym ISKCON was not in existence prior to the plaintiff’s adoption of such a term and that the originator has the sole right to protect their trademark. According to the court, the trademark deserved the highest degree of protection for its continuous and exclusive use to distinguish the products and services from others. The worldwide popularity and the beliefs and faiths of the people were also taken into account to adjudicate the case. Therefore, after considering all the aspects, the court not only safeguarded the plaintiff’s rights but also prevented any further trademark infringements by ordering the defendant to compensate the plaintiff with injunctions for using its name.

Broadly, the following criteria were determined to declare ISKCON as a ‘well-known trademark’ within Section 11(6) and Section 11(7) of the Trade Marks Act 1999, as well as Section 2(1)(zg) of the legislation:

That the plaintiff’s trademark ISKCON had wide acceptability-

The High Court affirmed that ISKCON is a well-known trademark with global recognition, reputation, and goodwill, enjoying widespread acceptance. According to Section 2(1)(zg) of the Trade Marks Act, 1999, a well-known trademark is one that holds significance to the public regarding specific goods and services. It was clearly evident that no entity had previously claimed the trademark ISKCON, thereby granting exclusive rights to the plaintiff for its use. Thus, the people who are devoted to this religious organization may purchase products unknowingly from the defendant’s website, believing them to be associated with the ISKCON.

That the popularity of the trademark is worldwide-

According to Section 11(6) of the Trade Marks Act, 1999 of India, a trademark is considered well-known if it holds significance in a particular area, has been advertised for a specific duration in a geographical area, and there is a record of successful enforcement of rights related to that trademark. ISKCON has achieved widespread recognition among the public, not only in India but also internationally. Therefore, the Court determined that the plaintiff meets the criteria outlined in the section, and consequently, the defendant is prohibited from using the ISKCON trademark.

That the trademark is in use since its beginning-

According to Section 11(7) of the Trade Marks Act, 1999 of India, a trademark can be recognized as a well-known one based on the extent and duration of its use, along with its publication and advertisement since its inception. The plaintiff provided compelling evidence to establish that ISKCON had been in use since its inception and had gained significant recognition by the time the defendant began using it. The first ISKCON temple was established in 1971 in India, and the organization has since expanded to over 600 temples worldwide, including in India. This extensive history and widespread presence make it questionable for the defendant to claim ignorance regarding the use of the ISKCON name.

That several actions have already been taken by the plaintiff for the protection of its trademark-

The court record clearly showed that the plaintiff had taken legal action against numerous infringers in the past across various platforms, establishing their ownership rights over the trademark and the goods and services associated with it. The plaintiff had consistently pursued legal avenues to safeguard its trademark, as evidenced by the diligent initiation of lawful proceedings to prevent its misuse.

Conclusion

To conclude this case, one must recall that the International Society for Krishna Consciousness (ISKCON) initiated a commercial lawsuit against ISKCON Apparel Pvt. Ltd. in the Bombay High Court, where it accused the clothing company of infringing its registered trademark by selling clothing online in its name. Although the company changed its name, it continued to use the same label. The court protected the rights of the plaintiff by clearly stating in its judgment that the plaintiff had a registered and well-known trademark. It also laid down the criteria for the determination of a trademark as a ‘well-known trademark’ under the Trade Marks Act, 1999. Therefore, this case is noted as a landmark case in the history of the Indian judiciary for the adjudication of similar cases of trademark infringements in the future.