Delhi High Court: A petition was filed by Jack Daniels Properties (petitioner) under Section 57 of the Trade Marks Act, 1999 seeking removal/cancellation of the impugned mark “JACK DANEIL’s. Amit Bansal, J., stayed the registration of the impugned mark as there was a prima facie case and balance of convenience against respondent 1 and irreparable harm will be caused to the petitioner if the operation of the impugned mark is not stayed.
It is the case of the petitioner that they have been using the mark “JACK DANIEL’S” since 1895 in respect of alcoholic beverages. The petitioner is the registered proprietor of various trademarks including “JACK DANIEL’S” and other formative parts. It is contended that the mark “JACK DANIEL’S” has been consistently and extensively used in India since 1997. The petitioner has also various registrations in respect of the mark “JACK DANIEL’S” in India across various classes. All the registrations are valid and subsisting. Despite the aforesaid, respondent 1 has got the mark “JACK DANIELS” registered under class 05 on a ‘proposed to be used’ basis.
Counsel for petitioner submitted that the registration and adoption of the said mark by respondent 1 is clearly mala fide and an attempt to ride over the goodwill and reputation of the petitioner’s mark. The same is likely to cause confusion and deception among the members of the public as well as cause harm to the reputation of the petitioner.
The Court noted that there is a prima facie case made out in favour of the petitioner and against the respondent 1 that the registration granted in favour of respondent 1 is violative of provision of Section 9(2)(a) and Section 11 of the Trade Mark Act, 1999. The balance of convenience is in favour of the petitioner and irreparable harm will be caused to the petitioner if the operation of the impugned mark is not stayed.
Thus, the Court held that the registration of the impugned mark “JACK DANIELS” granted in favour of respondent 1, shall remain stayed till the next date of hearing.
[Jack Daniels Properties v. Manglam Krupa, 2024 SCC OnLine Del 8564, decided on 04-12-2024]
Advocates who appeared in this case :
Mr. Ankit Sahni, Ms. Kritika Sahni, Mr. Chirag Ahluwalia and Mr. Mohit Maru, Advocates for petitioner
Mr. R. Venkat Prabhat, SPC with Mr. Abhinav M. Goel, Advocate for R-2
Buy Trade Marks Act, 1999 HERE
