In a recent decision, Justice Amit Bansal of the Delhi High Court granted an interim injunctive relief to international whiskey brand, Jack Daniel’s Properties (JD) Inc. This petition pertained to infringement of JD’s registered trademark. The petitioner sought for removal of the Mark as registered by the respondent.
Background
Jack Daniel’s is a renowned brand of Tennessee style whiskey primarily produced at the Jack Daniel distillery in Lynchburg, Tennessee since 1895. In India, the brand gained prominence with its celebrated whiskey JD “Black Label”. It has continued and extensive brand presence since 1997.
The dispute revolved around an identical mark that the respondents had registered under the ‘Proposed to be used’ category for class 05 of trademark registrations, which pertains to pharmaceutical and veterinary preparations.
Contentions
The primary contention of the petitioner was that the registration 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 member of the public as well as cause harm to the reputation of the petitioner.
Statutory & Judicial Basis For Grounds of Confusion & Deception
Under the Trademarks Act, 1999 (hereinafter the ‘Act’), Section 9 prescribes absolute grounds for refusal of registration. Its subclause 9 (2) (a) dictates that a mark shall not be registered as a trade mark if, it is of such nature as to deceive the public or cause confusion.
Section 11 of the act prescribes Relative grounds for refusal of registration; this section also talks about the possibility of confusion between trademarks and prescribes refusal if a trademark is identical to an earlier trademark or identical in its services. Especially subclause 11 (b) (2) states, “if it is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India and the use of the later mark without due course would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.”
Further, a very similar judicial development comes to fore with a similar factual matrix. In the 1965 case of Sunder Parmanand Lalwani vs Caltex (India) Ltd., the appellant pursued a relief of grant of trademark against the impugned High court order which declined its appeal against the deputy registrar of the IPAB. The appellant sought trademark for “Caltex” in the category of watches, and claimed that he had purchased exclusive rights for the same from Degoumois & Co., which owned the watch trade mark in Switzerland. The respondents “Caltex” used to deal mainly in petroleum, kerosene and lubricants like grease and oils etc.
On the question of whether the use can cause confusion and deception here, the court devised an innovative reasoning. The court, upon analysis of the potential target audience, realized that both the parties strived to sell their products to a certain economic diaspora, i.e. the appellant was into the business of cheap watches and the respondent sold mass products needed by people of all walks of life. So, while the goods may be different, those are not special products that are distinct in identity.
The respondents were a large company known by many as having large resources, and therefore, capable of starting any new industry or trade. Because of this reason, the court found that there is a greater probability of the public believing that any goods with the mark “Caltex” on them would be the goods of the respondents.
In another case of Nandini Deluxe vs Karnataka Cooperative Milk Producers Federation Ltd., the Apex Court relied on the reasoning that it is not enough to look at the trade marks in isolation and make a comparison to arrive at a decision. The court found, “One has to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would from by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing.”
Conclusion: Analysis of Judicial Reasonings On The Immediate Case
Facts establish that the appellant registered the trade mark under class 5, which pertains to pharmaceutical and veterinary preparations. While on the face of it this looks like a rip off from the traditional JD trade mark, relying on these judicial developments, the respondents may have a bleak opportunity to go for the defence of lack of confusion and deception because of the far-fetched distance between the potential use by the respondents. However, a disclaimer must be made at this juncture that the appellant has claimed to have secured a registered trademark across multiple classes, as they’ve produced in the petition. Such claims have not been reproduced in the reported judgement; however the court affirms to the validity of these claims.
Authors: Chelsi Nanda & Alok Mourya