ISKCON as a Trade Mark
The International Society for Krishna Consciousness (ISKCON) was established in 1966 in New York and is a religious organization with an international presence. The organization has registered its name, abbreviation thereof (ISKCON) and device under various classes including Class 25 i.e., clothing, footwear and headwear. In 2020, ISKCON came across infringing actions by Iskcon apparel Pvt. Ltd. For their use of the mark ‘ISKCON’ for goods and services.
In addition to the prayer of permanent injunction for restraining the use of the mark by the defendant, counsel for the Plaintiff also prayed for a declaration of ‘ISKCON’ as a ‘well-known trade mark’ under Section 2(1)(zg) of the Trade Marks Act, 1999.
The Bombay High Court agreed to the contentions made by ISKCON and observed that ISKCON had gained international recognition and repute but it was restricted to any particular goods, services or activities. The evidence on record established that ISKCON had achieved immense and long-standing reputation and goodwill in India and abroad. ISKCON had been using the impugned mark openly and widely since the very beginning and had brought actions against many infringers in the past. Based on this, the court granted the relief sought against the defendant and also went on to declare it as a ‘well-known trade mark’ as it satiated all necessary conditions u/s 11(6) and 11(7) of the Trade Marks Act, 1999.
ISKCON Bangalore’s plight
ISKCON Bangalore was not happy with the afore-mentioned order. They believed that the implications of the judgment would mean that ISKCON Mumbai had exclusive rights over the mark, ‘ISKCON’. They also alleged the Registrar of Trade Marks to have refused their claim over the mark in view of the 2020 judgement. Consequently, ISKCON Bangalore brought an action against ISKCON Mumbai in 2021 which was decided recently.
The Bombay High Court in the recent case clarified that the Registrar must only bind himself to the part of the judgment that declared ISKCON as a ‘well-known’ trade mark. The questions regarding exclusive right of use was left open and it was not binding on ISKCON Bangalore as it was not made a defendant in the former case. The court also observed that establishing a concurrent use was open to ISKCON Bangalore.
What is concurrent use?
The concept of concurrent use arises when there are two traders with the similar or identical trade mark. Although, this is against the very purpose of Trade Mark registration, it may be allowed in certain cases. These are cases when another trader had been using the identical or similar trade mark before the date of application and had been concurrently using the trade with no malicious intent. A concurrent registration is granted on conditional grounds and may even be refused in the interest of the public.
The factors to be considered for granting of registration based on honest concurrent use, under section 12(3) of the Trade Marks Act, 1999 are:
- The honesty of adoption and use
- The quantum of concurrent user shown by the applicant having regard to duration, area and volume of trade
- The degree of confusion likely to follow the registration as a measure of public inconvenience
- Concrete and proven instances of such confusion
- Relative inconvenience caused to both the parties
In the case of ISKCON Bangalore v. ISKCON Mumbai, both the parties have been formed for the same purpose, but have separate legal identities. Both of them have been using the mark of ‘ISKCON’ for a long-time, having established popularity and recognition among the public. Hence, ISKCON should be registrered as a concurrent user without any prejudice to the rights of ISKCON Mumbai. This would have the effect of protecting both the entities against unauthorized used of their marks by others, but not each other.