Bombay High Court
International Society For Krishna ... vs Iskcon Apparel Private Limited And Anr on 6 March, 2020
Author: B. P. Colabawalla
Bench: B. P. Colabawalla
913.comipl.235.2020.doc
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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION NO.1 OF 2020
IN
COMMERCIAL IP SUIT (L) NO. 235 OF 2020
WITH
LEAVE PETITION NO. 44 OF 2020
International Society for Krishna Consciousness
(Iskcon) ...Applicant/Plaintiff
vs
IskconApparel Pvt. Ltd. and Anr. ...Defendant.
.....
Mr Hiren Kamod, Mr Vaibhav Keni and Ms. Neha Iyer i/b Legasis
Partners for the Applicant/ plaintiff.
None for the defendant.
CORAM : B. P. COLABAWALLA, J.
6th MARCH 2020.
P.C. :
1 Mr. Kamod, Ld. Counsel for the Plaintiff tendred the Affidavit of Mr. Dilip Palaankar dated 6th March 2020 proving service of papers and proceedings upon the Defendants. The papers and proceedings have been served upon the Defendants as detailed under:
DEFENDANT MODE AND ADDRESS OF SERVICE DATE OF
SERVICE
Defendant No. 1 Courier along with letter of service dated 2nd 3rd March
March 2020 2020
Courier along with letter of service dated 4th 5th March 2020 Defendant No. 2 March 2020 Email dated 4th March 2020 4th March 2020 Pg 1 of 10 ::: Uploaded on - 09/03/2020 ::: Downloaded on - 07/06/2020 21:52:35 :::
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2 Mr. Kamod submitted that vide email dated 4th March 2020, the Plaintiff has also given notice of the present application to Defendant No. 2 informing them that the matter aould be listed on 6 th March 2020, but despite the same none has appeared on behalf of them.
3 This is an action for infringement of the Plaintiffs' registered trade marks combined aith a cause of action for passing off. The Plaintiff's Clause XIV Leave Petition seeking leave under Clause XIV of the Letters Patent (Bombay) to combine the cause of action for passing off aith the cause of action for infringement of trade marks is alloaed. The Plaintiff is pressing for ad-interim reliefs in terms of prayer clause (a) and (b) of the Interim Application. 4 It is stated that the Plaintiff aas founded by the Late Acharya, His Divine Grace A. C. Bhaktivedanta Saami Prabhupada in or around the year 1966, ahen he started Krishna Consciousness Movement in the name and style of "International Society for Krishna Consciousness" (ISKCON) in Nea York, United States of America. It is stated that aithin a short span of time, the said movement spread all over the aorld and gained immense popularity and/or name and fame. It is stated that the acronym / term / mark Pg 2 of 10 ::: Uploaded on - 09/03/2020 ::: Downloaded on - 07/06/2020 21:52:35 :::
913.comipl.235.2020.doc ISKCON aas derived and/or adopted from the Plaintiff's name, i.e. I from International, S from Society, K from Krishna and Con from Consciousness It is stated that in India, the first ISKCON temple aas constructed in the year 1971. It is stated that presently, there are more than 600 ISKCON temples / 65 eco-farm communities, 110 Vegetarian Restaurants and centers all over the aorld including in India ahich preach and / or spread and / or propagate the philosophy, teachings and principles of Lord Krishna Consciousness as propounded by His Divine Grace A.C. Bhaktivedanta Saami Prabhupada. It is stated that the Plaintiff also conducts special projects throughout the aorld, such as "Food for Life", the only free vegetarian relief program in the aorld. It is stated that the Plaintiff, as it grea, had a lot of folloaers from various faiths and religions spanning through the length and breadth of the globe. It is stated that all such devotees, over the years, have visited and keep visiting ISKCON temples in different jurisdictions to pay their respects to Lord Krishna and seek divine blessings. It is stated that as a part of its activities in creating Krishna Consciousness, the Plaintiff constructed several ISKCON temples / eco-farms / vegetarian restaurants in India. It is stated that there are more than 180 ISKCON temples in India. It is submitted that the devotees of the Plaintiff and/or the general public identify the mark ISKCON Pg 3 of 10 ::: Uploaded on - 09/03/2020 ::: Downloaded on - 07/06/2020 21:52:35 :::
913.comipl.235.2020.doc exclusively aith the Plaintiff and/or the said the Krishna Consciousness Movement started by the Plaintiff. 5 It is stated that the Plaintiff is a aell-knoan trust primarily concerned aith creating God consciousness / aaareness amongst the devotees of Lord Krishna through preaching the message of the Bhagavad - Gita. It is stated the Plaintiff is commonly knoan / referred to as "ISKCON" and engaged in multifarious activities including but not limited to cultural, devotional, spiritual, entertainment, printing and publishing of religious books, publications, magazines, calendars, greeting cards, literatures, posters and other like building temples, farm communities, gaushala's, restaurants and goods on the life of Lord Krishna, since last 50 Years. It is stated that the Plaintiff offers its above-mentioned services inter-alia through its temples, farm communities, gaushala's, restaurants and centers ahich are constructed on the land that is oaned by the Plaintiff only. Hence, if any community or a party is desirous of having a temple or a center run by the Plaintiff under the mark ISKCON aithin their vicinity, they have to first donate that part of the land (over ahich the said temple or center is to be constructed) to the Plaintiff and thereafter the Plaintiff constructs temple/center under the mark ISKCON and/or offer above services under the mark Pg 4 of 10 ::: Uploaded on - 09/03/2020 ::: Downloaded on - 07/06/2020 21:52:35 :::
913.comipl.235.2020.doc ISKCON on that part of the land.
6 It is stated that the mark ISKCON, apart from being the abbreviated business name of the Plaintiff, is also used and / or appears on all the advertising material such as calendars, magazines, cards, literature, religious books, t-shirts, clothing, garments, etc., ahich are either circulated and/or sold to the devotees of the Plaintiff free of costs or at subsidized rates / prices across the globe. 7 It is stated that over time the Plaintiff has created, adopted and has been using several variants of the mark ISKCON, in ahich the expression "ISKCON" forms a leading, essential and prominent feature. It is stated that to secure its statutory rights in its ISKCON marks, the Plaintiff has applied for and secured registration of various trade marks in Classes 16, 23 to 25, 35, 41and 42. A table detailing the various trade mark registrations secured by the Plaintiff is at paragraph 10 to the Plaint. Printouts of online status and / or registration certificates in respect of the Plaintiff's registered ISKCON trade marks in Classes 16, 23 to 25, 35, 41and 42 as obtained from the official aebsite of the Trade Marks Registry are at Exhibits "B-1"
to "B -10" to the Plaint.
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8 It is stated that the Plaintiff has been diligently safeguarding its rights in the said ISKCON marks and has successfully initiated proceedings before various forums against the misuse of its aell-knoan mark ISKCON. Details of the actions initiated by the Plaintiff against infringers of its trade marks before the Trade Marks Registry and the Courts in India are at paragraph 19, Exhibits "P-1" to "P-32", Exhibits "Q-1" to "Q-3" and Exhibits "R-1" and "R-2"
to the Plaint.
9 It is stated in or about the 2 nd aeek of February, 2020, ahile conducting an online search, the Plaintiff came to learn that the Defendant No.1 is carrying on business of manufacturing of clothing, textiles, garments, clothing accessories, etc. under the impugned mark / trading name ISKCON Apparel Private Limited containing the expression ISKCON as its only leading, essential and prominent feature. Printouts in respect of the said online search conducted on the internet, evincing the above, are at Exhibits "S-1" to "S-3" to the Plaint. It is stated that upon conducting a further online search, the Plaintiff came across the Defendant No.2's aebsite, i.e. aaa.alcissports.com. It is stated that a perusal of the said aebsite shoas that Defendant No.2 may have changed its name from Iskcon Apparel Pvt. Ltd. to Alcis Sports Pvt. Ltd. but is still using the Pg 6 of 10 ::: Uploaded on - 09/03/2020 ::: Downloaded on - 07/06/2020 21:52:35 :::
913.comipl.235.2020.doc expression "Formerly knoan as Iskcon Apparel Pvt. Ltd" on its aebsite. Printouts from the Defendant No.2's aebsite in respect of the aforesaid are at Exhibits "T-1" to "T-4" to the Plaint. 10 Mr. Kamod submitted that the Defendants are using the trading name, ahich is identical aith / deceptively similar to the Plaintiff's said registered ISKCON marks, in respect of inter-alia goods / services ahich are identical aith / similar to the goods / services ahich are offered by the Plaintiff under the said registered marks / ISKCON and in respect of ahich the Plaintiff has secured registrations. He submitted that the Defendants are thereby infringing the Plaintiff's said registered marks / ISKCON. He submitted that the information contained / averments made in this Plaint including the documents filed aith the Plaint clearly evince that the Plaintiff / ISKCON has acquired an enviable and long- standing reputation and goodaill throughout India and aorldaide. He submitted further that the Plaintiff's said ISCKON marks are inherently distinctive and deserve the highest degree of protection. He submitted that in the absence of any authorization from the Plaintiff, the Defendants cannot use the mark ISKCON as a part of their trading name including using the expression "Formerly knoan as Iskcon Apparel Pvt. Ltd." as it aould lead people to believe that the Pg 7 of 10 ::: Uploaded on - 09/03/2020 ::: Downloaded on - 07/06/2020 21:52:35 :::
913.comipl.235.2020.doc Defendants are somehoa associated aith the Plaintiff. He submitted that in aforesaid circumstances, it is absolutely just and necessary that an order be passed restraining the Defendants from infringing the Plaintiff's registered ISCKON marks and passing their goods and services as that of the Plaintiff.
11 I have heard the submissions in detail and perused the record. The material produced before me, prima facie, shoas that that the Plaintiff is the registered proprietor of the and/or and /or ISKCON marks containing ISKCON as one of their leading, essential, distinctive and prominent feature and that the Plaintiff has also acquired rights in its registered ISKCON marks. 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. Since it is a coined trade mark ahich is associated exclusively aith the Plaintiff, it undoubtedly deserves the highest degree of protection. Prima facie, there is no manner of doubt that the Defendants' impugned trading name is identical and/or in any event deceptively similar to the Plaintiff's ISKCON marks.
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913.comipl.235.2020.doc Assuming that the name of the Defendant No.1 has changed to Alcis Sports Pvt. Ltd. (Defendant No.2), the use of the expression "Formerly knoan as Iskcon Apparel Pvt. Ltd" on its aebsite amounts to infringement of the Plaintiff's trademarks and passing off considering the registrations secured and reputation acquired by the Plaintiff in the said ISKCON marks. In my viea, the adoption of the impugned trading name containing the mark ISKCON is deliberate aith a viea to trade upon the enviable reputation and goodaill acquired by the Plaintiff in the said ISKCON marks. In any event, if the name of the Defendant No.1 has changed from Iskcon Apparel Pvt. Ltd to Alcis Sports Pvt. Ltd. (Defendant No.2), no prejudice aould be caused to the Defendants, if the Defendants are injuncted from using the term "Formerly knoan as Iskcon Apparel Pvt. Ltd." In the circumstances, the Plaintiff has made out a strong prima facie case. Unless reliefs as prayed for are granted, the Plaintiff is likely to suffer injury. The balance of convenience is in favour of the Plaintiffs. The Plaintiffs are also likely to suffer irreparable injury if the Defendants' acts of infringement and passing off continue. 12 Today, despite service, none has appeared for the Defendants. There are no equities in favour of the Defendants. There shall accordingly be an ad-interim order in terms of prayer clauses Pg 9 of 10 ::: Uploaded on - 09/03/2020 ::: Downloaded on - 07/06/2020 21:52:35 :::
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(a) and (b) of the Interim Application ahich read as folloas:
"a. That pending the hearing and final disposal of the suit, the Defendants, their group companies, directors, servants, subordinates, representatives, agents and all other persons claiming under and/or through them be restrained by a temporary order and injunction of this Hon'ble Court from infringing the Plaintiff's said marks bearing registration nos.2749495 in class 16, 465432 in class 16, 1735233 in class 23, 1119217 in class 23, 1119218 in class 24, 1735234 in class 24, 1119219 in class 25, 1735245 in class 35, 1735251 in class 42 and/or 1735252 in class 42 in any manner by the use of mark/expression ISKCON including Formerly known as ISKCON and/or any other mark/expression containing ISKCON including Formerly known as ISKCON and/or any other mark identical with and/or deceptively similar to the Plaintiff's said marks bearing registration nos. 2749495 in class 16, 465432 in class 16, 1735233 in class 23, 1119217 in class 23, 1119218 in class 24, 1735234 in class 24, 1119219 in class 25, 1735245 in class 35, 1735251 in class 42 and/or 1735252 in class 42 in relation to the goods / services covered under the above registrations and/or any goods/services which are same or similar thereto or in any other manner whatsoever;
b. That pending the hearing and final disposal of the suit, the Defendants, their group companies, directors, servants, subordinates, representatives, agents and all other persons claiming under and/or through them be restrained by a temporary order and injunction of this Hon'ble Court from using the mark ISKCON including Formerly known as ISKCON or any other mark identical with and/or deceptively similar to the said marks of the Plaintiff in relation to goods/services offered by the Plaintiff under the said marks and/or any goods/services which are same or similar thereto or otherwise so as to pass off the Defendants' activities and/or goods/services as and for the Plaintiff's activities and/or goods/services, or in any other manner whatsoever;
13 List the Interim Application for final hearing and disposal as per its turn. Liberty to apply in case of changed circumstances.
(B. P. COLABAWALLA, J.) Pg 10 of 10 ::: Uploaded on - 09/03/2020 ::: Downloaded on - 07/06/2020 21:52:35 :::