Delhi High Court stays registration of Jack Daniel's trademark in favour of Indian company

The Delhi High Court recently stayed the registration of Jack Daniel's mark by the trademark registry in favour of Indian company, Mangalam Krupa under the category of pharmaceutical and veterinary products [Jack Daniels Properties Inc Vs Mangalam Krupa]..Justice Amit Bansal passed the order after United States-based alcohol manufacturer Jack Daniel's (petitioner) moved the Court alleging trademark infringement. The Court said that the registration of trademark in favour Mangala Krupa seemed to be prima facie in violation of the Trade Mark Act and irreparable harm will be caused to the petitioner if the same is not stayed."In my view, a prima facie case is made out in favour of the petitioner and against the respondent no.1 that the registration granted in favour of the respondent no.1 is violative of provision of Section 9(2)(a) and Section 11 of the Trade Mark Act, 1999. Balance of convenience is in favour of the petitioner and against the respondent no.1 Irreparable harm will be caused to the petitioner if the operation of the impugned mark is not stayed," the Court said in its order of December 4. .The trademark JACK DANIEL’S was registered by the trademark registry in 2023 in favour of Mangalam Krupa on a 'proposed to be used basis.'It was contended by Jack Daniel's that it owns the trademark 'JACK DANIEL’S', which has been in operation since 1895. Further, it was argued that the company is known for producing premium-quality beverages consumed in over 170 countries including India. Its trademarks, notably 'JACK DANIEL’S,' represent a billion-dollar enterprise. .It was the company's contention that Mangalam Krupa has allegedly adopted a mark identical or deceptively similar to the Jack Daniel's trademarks for pharmaceutical products. According to them, the use of the mark in the pharma category runs the risk of misleading consumers into associating the products with the petitioner, potentially diluting the distinctiveness and goodwill of the JACK DANIEL’S mark.It was further argued that any continued use or registration of the mark is likely to harm the petitioner, causing irreparable damage and undermining the brand’s reputation. To protect its rights, the US based company sought to have the mark removed from the trademark register. .The Court found merit in the arguments raised by the petitioner and proceeded to stay the registration of the mark in favour of Mangalam Krupa."Accordingly, the registration of the impugned mark.... in class 05 granted in favour of respondent no.1 (Mangalam Krupa), shall remain stayed till the next date of hearing," the Court directed. The case will be heard next on March 26, 2025..Jack Daniel's was represented by advocates Ankit Sahni, Kritika Sahni, Chirag Ahluwalia and Mohit Maru. Mangalam Krupa was represented by advocates Venkat Prabhat and Abhinav M Goel..[Read Order]