Calling for a CONscious use of the “Well-Known” Mark ISKCON

On 6^th March 2020[1], the Single Bench of the Bombay High Court led by Hon’ble Mr. Justice B.P Colabawalla, granted an ad-interim injunction in favour of the Gaudiya Vaishnava Hindu religious organization popularly known as the International Society for Krishna Consciousness (ISKCON) in a trademark infringement suit filed against Iskcon Apparel Pvt. Ltd. & Anr., an entity, engaged in the business of manufacturing of clothing, textiles, garments, etc. While doing so the Court observed that “… ISKCON is a coined trademark of the Plaintiff, that is to say, that the said term ISKCON did not exist prior to the Plaintiff’s adoption and use of the same.”[2] Thereafter, ISKCON sought a decree of declaration that its trademark “ISKCON” be declared as “well-known”[3], which was granted in affirmative by the Court vide its recent order dated 26^th June 2020.[4]

HOW TRADEMARKS ARE RECOGNISED AS “WELL-KNOWN” IN INDIA?

In India, a mark can be declared as “well-known” either by a decision of the Court or the Registrar (pursuant to TM Rules, 2017). Accordingly, pursuant to the enactment of the Trademark Rules, 2017, a party can file an application for registration of its trademark as “well-known” mark.

Recognition under the Trade Marks Act, 1999

A. REGISTRAR
According to Rule 124 of the Trade Mark Rules 2017, any person may file an application in Form TM-M requesting the Registrar for determination of the trademark as “well-known” subject to payment of an appropriate fee.

A.1. Factors to be taken into account for determining marks as “well-     known”
The registrar, upon being satisfied with the fulfilment of the following factors may declare a mark to be “well-known”:

1. Knowledge and recognition of trademark in relevant section of the public;
2. Duration, extent and geographical area of:
3. use of the trademark;
4. promotion including but not limited to advertisements, publications, presentations at fairs, exhibitions, etc.
5. Duration and geographical area of the registration or application for registration of the trademark under the Act;
6. A complete record of successful enforcement of rights in the trademark, in particular the extent to which the trademark has been recognized as a “well-known” mark by any Court or Registrar under the Act.[5]

In addition to the above, while determining whether the trademark is known the ‘relevant section of the public’, it is important to take into consideration the number of (1) actual or potential consumers; (2) persons involved in the channels of distribution of the goods and services and/or (3) the business circles dealing with the goods and services.[6]

A.2. Factors not to be taken into account for determining marks as “well-known”

Following factors shall not be taken into consideration for determining “well-known” marks in India:

1. Use of trademark in India;
2. Registration of the trademark;
3. Application for registration of trademark;
4. That the trademark is:
5. well-known in; or
6. has been registered in; or
7. in respect of which an application for registration has been filed in, any jurisdiction other than India; or
8. a trademark is well-known to the public at large in India.

B. COURT
A trademark can be declared as “well-known” mark by the Court, while taking into account the factors laid down in Section 11(6) and (7) of the Trade Marks Act, 1999. Thus, in case a mark is already declared as “well-known” in at least one relevant section of the public, by any Court or Tribunal, the Registrar shall consider that trademark as a “well-known” trademark for registration under the Act.[7]

A list of trademarks declared “well-known” marks either by the Registrar or the Courts, can be accessed here.

[1] International Society for Krishna Consciousness (ISKCON) vs. Iskcon Apparel Pvt. Ltd. & Anr., Commercial (IP) Suit No. 235/ 2020, order dated 6.03.2020 available at: https://bombayhighcourt.nic.in/generatenewauth.php?bhcpar=cGF0aD0uL3dyaXRlcmVhZGRhdGEvZGF0YS9vcmlnaW5hbC8yMDIwLyZmbmFtZT1JQTE3ODYyMDA2MDMyMC5wZGYmc21mbGFnPU4mcmp1ZGRhdGU9JnVwbG9hZGR0PTA5LzAzLzIwMjAmc3Bhc3NwaHJhc2U9MjkwNjIwMTIwOTQ0

[2] Id. at para 11.

[3] Section 2(1)(zg) of the Trade Marks Act, 1999: “well-known trade mark”, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.

[4] Available at: https://images.assettype.com/barandbench/2020-06/49a76b83-1af4-4dd0-9b04-9a9da8990633/ISKCON_v__Iskcon_Appaeral_Pvt__Ltd____Anr____.pdf

[5] Section 11(6) of the Trade Marks Act, 1999

[6] Section 11(7) of the Trade Marks Act, 1999.

[7] Section 11(8) of the Trade Marks Act, 1999.