Iskcon_Trademark_Formerly - KLS Advisors

CAN A CHANGE OF NAME BY A COMPANY EMPOWERS IT TO USE OR PUBLISH ITS PREVIOUS NAME EVEN IF SUCH PRIOR NAME INFRINGES TRADEMARK ?

(International Society for Krishna Consciousness (Iskcon) (Plaintiff) vs Iskcon Apparel Pvt. Ltd. (Defendant) and Anr., Commercial IP Suit (l) no. 235 of 2020, Bombay High Court)

BACKGROUND

In February of 2020 the ISKCON (Plaintiff) found the infringing material where Iskcon Apparel Pvt. Ltd. (Defendant) was using the trademark ISKCON. Initially they attempted to have the defendant cease using their trademark by serving them number of notices. However, the later did not pay any heed to the notices served & the plaintiff was forced to file a case for infringement. Soon after the allegations, the Defendant renamed its company from Iskcon Apparel Pvt. Ltd. to Alcis Sports Pvt. Ltd., but preserved the phrase “previously known as Iskcon Apparel Pvt. Ltd.” in its websites & prominently used ISKCON in all their products.

ISSUES RAISED

• Whether the trademark of the Plaintiff a well-known one?
• Whether the trademark rights are infringed even after the Defendant changed the company’s name?

Contentions

• Plaintiff:

ISKCON was established as Krishna Consciousness Movement & it now has its presence in countries all over the globe. Since 1994, the organization’s history has been documented at its own registered domain and the name of the organisation itself is a registered trademark. And use of Trademark, even with pharse like formerly known as … , infringes its legitimate rights.

• Defendant:

ISKCON Apparels Pvt. Ltd. was no longer in existence since it had adopted Alcis Sports Private Limited as its new name. It further submitted that an affidavit-cum-undertaking has been filed on June 23, 2020, cessation of trademark ISKCON in its business activities.

JUDGMENT

The Bombay High Court concluded that merely changing a company’s name does not absolve it from trademark infringement or passing off if it continues to use the earlier infringing name in any form. The court permanently restrained the defendants from using “ISKCON” in their corporate name, trading style, or marketing materials. Further it held that disclaimers such as “formerly known as” do not mitigate the likelihood of confusion or damage to goodwill.