Radhika Agarwal brings us her second submission in the 2nd Annual SpicyIP Fellowship applicant series. You can view her first post here.
Iskcon sues Iscon for trademark infringement
The International Society for Krishna Consciousness (popularly known as ISKCON) founded by A. C. Bhaktivedanta Swami Prabhupada in 1966 in New York is known world-wide for its devotional practices towards Lord Krishna, a Hindu deity. Popularly known as the Hare Krishna movement, the religious organization has chapters all over the world, including India. The organization now boasts of having 250000 devotees worldwide, in addition to having established an international network of 500 public utility services such as schools, restaurants, communities, centers and temples.
Recently, the organization sued the company J.P. Infrastructure Pvt. Ltd. (involved in the work of real estate development) for the construction of Iscon Mega Mall in the vicinity of the ISKCON temple premises. [As per TOI article here]. According to the ISKCON Trust, the use of a similar logo and the word ‘Iscon’ as the name of the mall building constructed next to the temple will constitute trademark infringement as the firm, J.P. Infrastructure Pvt. Ltd. is using the goodwill generated worldwide by the well-established ISKCON society. Further, the Trust claimed that there was misrepresentation on part of the realty firm as the use of its trademark was giving a false impression to the public that Iscon Mega Mall had been set up under the aegis of ISKCON. Claiming its reputation to be increasingly harmed day by day, ISKCON asked for an interim stay order. According to the plaintiff, “The reputation of the trademark has been misappropriated by the realty firm in such a way that it misrepresents itself as being the owner of the trademark or having some nexus/affiliation with the temple trust.”
While it is unclear whether ISKCON’s trademark is unregistered or not, the reputation of the mark is not in dispute and enjoys protection under Indian law.
The primary law governing trademarks in India is the Trade Marks Act 1999. Section 29 of the Act lists the acts that constitute trademark infringement of registered trademarks. (The section is produced in relevant part at the end of the post.)
Unregistered trademarks also enjoy protection under common law according to the dilution theory. Dilution is said to take place when a mark already in use is being used by another enterprise such that the distinctiveness of the mark is in danger (consumer confusion is not a prerequisite). This method of dilution of trademark is said to be blurring.
As per the above article, in May, the firm was issued a show-cause notice by the court. The firm applied for dismissal of the suit, claiming that the suit filed against it, being a composite one with three-fold prayer was not maintainable. Further, it argued that its logo was dissimilar to that of ISKCON, due to ‘JP’ written on it. According to the defendant, its action had not constituted trademark infringement since its logo was sufficiently distinct and the firm had had various other projects such as Iscon Park, and Iscon Plaza close to the temple since 2000. The court however remained unconvinced with the firm’s reply and dismissed its application in October, while the main issue remains to be decided.
ISKCON has indeed gained international recognition as a religious movement. In my opinion, the defendant’s use of the aurally and visually similar word ‘Iscon’ on its buildings (that too, in the vicinity of the ISKCON temple) would lead to likelihood of confusion among others, leading them to associate the two. ISKCON should hence be granted damages for infringement of its trademark.
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[Section 29 of the Act-“Infringement of registered trade marks.-
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-…(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub- section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.” ]
