Bombay High Court: B.P. Colabawalla, J., held that,
“Trade Mark ISKCON has come to enjoy a personality that is beyond the mere products/services rendered thereunder and the recognition, reputation and goodwill of the said trade mark ISKCON is no longer restricted to any particular class of goods or services.”
Permanent Injunction
Plaintiff had sought permanent injunction to restrain the defendants from infringing the plaintiff’s registered trademarks, passing off and other reliefs.
A decree of declaration has also been sought that the plaintiff’s trademark ISKCON is a ‘well-known trade mark’ in India.
Director of Defendant 2 has give an undertaking that the defendants will not use the trad mark / name ISKCON by itself or as a part of the trade mark / name or in any manner whatsoever including the impugned expression “Formerly known as ISKCON”.
Advocate for the plaintiff submitted that apart from the above-stated declaration, plaintiff is also entitled to a declaration that its trademark ISKCON is a well-known trademark in India.
Plaintiff has made applications/secured registrations in respect of the trade mark ISKCON and/or marks containing ISKCON as one its leading, essential, distinctive and prominent feature in respect of various goods/services/classes.
Plaintiff has been regularly, openly, continuously, uninterruptedly and extensively using the said mark ISKCON in respect of various goods and services since at least the year 1971 with a view to distinguish the goods/services bearing the said mark ISKCON from those of others.
Further the Counsel for the petitioner also submitted that parameter required to be taken into consideration for a well-known trademark as per Sections 11(6) and 11(7) of the Trade Marks Act, 1999 are fulfilled in the present case.
Decision
It is clear that ISKCON is a coined trade mark of the Plaintiff, that is to say that the said term ISKCON did not exists prior to the Plaintiff’s adoption and use of the same and thus it deserves the highest degree of protection.
Plaintiff has been diligently safeguarding and protecting its rights in the said trade mark ISKCON and has initiated proceedings before various forums against the misuse of its trade mark ISKCON and been successful in enforcing its rights in its mark ISKCON.
Hence in Court’s opinion, plaintiff’s trade mark ISKCON satisfies the requirements and tests of a well-known trade mark as contained in Sections 11(6), 11(7) and other provisions of Trade Marks Act.
Therefore, Court held that trade mark ISKCON is a well-known trade mark in India within the meaning of Section 2(1) (zg)of the Trade Marks Act, 1999. [International Society for Krishna Consciousness (ISKCON) v. Iskcon Appaeral (P) Ltd., 2020 SCC OnLine Bom 729 , decided on 26-06-2020]
