Jack Daniel's Triumphs In Trademark Battle Over JD Malt

Jack Daniel's Triumphs In Trademark Battle Over JD Malt

Introduction

A trademark opposition case was heard before the Assistant Registrar of Trade Marks. The applicant, John Distilleries Ltd., sought registration of the trademark "JD Malt" under Class-33 for "Wines, Spirits and Liquors." The opponent, Jack Daniel's Properties Inc., objected to the registration, citing prior use and ownership of the "JD" trademark.

Factual Background

John Distilleries Ltd. applied for registration of the trademark "JD Malt" on September 13, 2007. The opponent, Jack Daniel's Properties Inc., claimed prior use and ownership of the "JD" trademark, citing its use since 1866.

Procedural Background

The applicant filed a counterstatement on October 16, 2012, denying the material averments made in the notice of opposition. The opponent filed evidence in support of their opposition, and the applicant filed evidence in reply.

Issues Involved in the Case

1. Whether the applicant's mark "JD Malt" is similar to the opponent's mark "JD" and likely to cause confusion or deception.

2. Whether the opponent has prior use and ownership of the "JD" trademark.

3. Whether the applicant's mark is registrable under the Trade Marks Act, 1999.

Submissions of the Parties

Opponent (Jack Daniel's Properties Inc.): The opponent claimed prior use and ownership of the "JD" trademark, citing its use since 1866. They argued that the applicant's mark "JD Malt" is similar and likely to cause confusion or deception.

Applicant (John Distilleries Ltd.): The applicant argued that their mark "JD Malt" is coined from the nomenclature of John Distilleries and is an honest adoption.

Discussion on Judgments and Legal Citations

The Assistant Registrar of Trade Marks analyzed the evidence and submissions made by both parties. The authority considered the similarity between the applicant's mark "JD Malt" and the opponent's mark "JD" and the likelihood of confusion or deception.

Reasoning and Analysis by the Authority

The Assistant Registrar of Trade Marks found that the applicant's mark "JD Malt" is not an honest adoption, as it is likely to cause confusion or deception among consumers. The authority noted that the opponent's mark "JD" has acquired global reputation, goodwill, and trans-border recognition in India.

Final Decision

The application no.1601623 in Class-33 is refused registration, and the Opposition thereto under No.791509 is allowed.

Law Settled in This Case

The case involves the interpretation of the Trade Marks Act, 1999, and the principles of trademark opposition. The decision reinforces Jack Daniel's exclusive rights to its iconic "JD" mark worldwide.

In this case, John Distilleries Ltd. was represented by Advocate Suman. Meanwhile, Advocate Sandhya represented the defendant.