Law & Practice

INDIA: ‘Formerly Known As’ Does Not Bypass Infringement

Published: June 15, 2020

Abhilasha Niroola Mehta & Mehta Associates (MehtaIP) Gurgaon, India INTA Bulletins Committee - Asia-Pacific Subcommittee

A recent case in India set an interesting example for brand owners looking to change their trade names in view of risk of potential trademark infringement and also highlighted prompt action by Indian courts in injunction matters.

In International Society for Krishna Consciousness (ISKCON) v. Iskcon Apparel Pvt. Ltd. and Anr. [Commercial IP Suit (L) NO. 235 of 2020], the Bombay High Court held on March 6, 2020, that use of the expression “Formerly Known as Iskcon Apparel Pvt. Ltd” on the defendant’s website amounted to an infringement of ISKCON’s trademarks and constituted passing off considering prior registrations of ISKCON marks in Classes 16, 23, 24, 25, 35, and 42 (bearing Indian Registration Nos. 274949, 465432, 1735233, 1119217, 1119218, 1735234, 1119219, 1735245, 1735251, and 1735252, respectively) and the reputation acquired by the plaintiff.

ISKCON is a globally recognized religious institution with followers throughout the world. In the present case, the defendants were trading under the name “Iskcon Apparel Pvt. Ltd.” and despite later changing their name to “Alcis Sports Pvt. Ltd.”, they continued to use the expression “Formerly Known as Iskcon Apparel Pvt. Ltd” on their website.

The court agreed that the defendant’s impugned trading name containing the ISKCON mark was identical, or in any event, deceptively similar to the ISKCON marks, and its adoption was deliberate with a view to trade upon the enviable reputation and goodwill acquired by the plaintiff in the said ISKCON marks.

The court also acknowledged that ISKCON is a coined trademark associated exclusively with the plaintiff and deserves the highest degree of protection.

The court observed that if the name of the defendant had changed from “Iskcon Apparel Pvt. Ltd” to “Alcis Sports Pvt. Ltd.”, no prejudice would be caused to the defendants so long as they were barred from using the term “Formerly Known as Iskcon Apparel Pvt. Ltd.”

In the present case, ISKCON established a strong prima facie case, and with the balance of convenience in its favor, it successfully obtained an injunction within a week.

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