Devans Modern Breweries Limited vs Cartel Bros Private Limited & Anr.
- Court
- Delhi High Court
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Order reserved on: 22.05.2026
Order delivered on: 22.06.2026
+ CS(COMM) 346/2026, I.A. 9898/2026, I.A. 9911/2026 & I.A.
10797/2026
DEVANS MODERN BREWERIES LIMITED .....Plaintiff
versus
CARTEL BROS PRIVATE LIMITED & ANR. .....Defendants
Advocates who appeared in this case:
For the Plaintiff : Mr. J. Sai Deepak, Senior Advocate alongwith Mr.
Afzsal B. Khan, Ms. Suhrita Majumdar, Mr. Manosij
Mukherjee, Mr. Sharad Besoya, Ms. Manya Jain,
Ms. Purnima Vashishtha and Mr. Bal Krishan Singh,
Advocates.
For the Defendants : Mr. Amit Sibal, Senior Advocate with Mr. Gaurav
Bahl and Mr. Ajit N. Makhijani, Mr. Rajat Jain, Ms.
Amrita Dubey and Ms. Chayanika Das, Advocates
for D-1.
Mr. Prateek Goyal and Mr. Gaurav Kathuria,
Advocates for D-2.
CORAM:
HON’BLE MR. JUSTICE TUSHAR RAO GEDELA
O R D E R
TUSHAR RAO GEDELA, J.
I.A. 8777/2026 (Under Order XXXIX Rules 1 & 2, CPC)
1. This is an application filed by the plaintiff under Order XXXIX Rules 1 & 2,
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Code of Civil Procedure, 1908 ( ‘CPC’ ) seeking interim injunction against the
defendants.
2. Plaintiff claims to be founded in the year 1961 by the pioneering
industrialist, Shri Dewan Gian Chand, and is one of the leading manufacturers of
malt, spirit & beers in the country. It also claims to manufacture fine and world
class alcoholic beverages under various popular brands such as “GODFATHER”,
“KOTSBERG”, “GIANCHAND”, “OLD VAT” and “SIX FIELDS” amongst
others.
3. It claims to have adopted the trademark “GODFATHER” in the year 1984 in
connection with “beers” in Class-32, and has since then been continuously and
extensively using the said trademark. It also claims to have secured several
trademark registrations under the mark “GODFATHER” in Class-33 in connection
to alcoholic beverages (except beers) which includes products like Rum and
Whisky. It is claimed by the plaintiff that on account of the extensive use of the
trademark over four decades, high quality products, promotional activities, and
significant market outreach, the trademark “GODFATHER” has come to be
recognized with the plaintiff’s products alone.
4. It is stated that the plaintiff came across a post by the defendant on its
Facebook page announcing the imminent launch of its whisky under the plaintiff’s
trademark “GODFATHER”. Upon further cursory searches and having reviewed
the Trade Marks E-register, plaintiff came across several applications filed by the
defendants in Class-33 containing the plaintiff’s registered trademark
“GODFATHER” as a part thereof.
5. Plaintiff being the prior adopter, prior user and registered proprietor of the
trademark GODFATHER, is aggrieved by the defendants’ use of the identical
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mark “GODFATHER” and imminent launch of the infringing product under the
said mark. It is in this backdrop that the plaintiff has instituted the accompanying
suit for infringement and passing off against the defendants and the present
application is filed for ad-interim injunction against the defendants.
CONTENTIONS OF THE PLAINTIFF:
6. Appearing for the plaintiff, Mr. J. Sai Deepak, learned senior counsel
submitted as under:
6.1. Setting the background, learned senior counsel submitted that the
plaintiff had adopted the mark “GODFATHER”, which is purely an
‘arbitrary’ mark as it has no inherent connection with the products being
manufactured by the plaintiff, and is entitled to a higher level of protection. It
is stated that the said mark has been used for the manufacture of its product
‘beer’ since the 1980s undisputedly and uninterruptedly by the plaintiff. It
was also asserted that the plaintiff was the first in the market to use the
trademark “GODFATHER” in respect of alcoholic beverages, and has used
the said mark not only in respect of manufacture of beer but also for rum and
whisky.
6.2. It has been submitted that the mark “GODFATHER” has been
registered for manufacture of beer in Class-32, and the registrations have been
enumerated in para 10 of the plaint. Apart from that, the registration for
manufacture of alcoholic beverages like rum and whisky (except beers),
which fall within Class-33, have also been obtained by the plaintiff as far
back as in the year 2005. Learned senior counsel had also submitted that apart
from India the mark “GODFATHER” in Class-32 has also been registered in
other jurisdictions like New Zealand, Canada, Malaysia, Singapore, and
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U.A.E. apart from other countries which are still valid. It is stated that the
plaintiff is also the owner of the copyright in the artistic work/labels
comprising the mark “GODFATHER” since the year 1998 as enumerated in
para 12 of the plaint.
6.3. In order to substantiate immense goodwill and stellar reputation in the
mark “GODFATHER”, learned senior counsel has referred to the sales
figures of the FY 2024-25 which is pegged at Rs.7,46,73,99,542/-, and the
advertisement and sales promotion figures for the same FY at
Rs.4,23,34,378/-. Learned senior counsel had also referred to a huge number
of sale invoices in respect of beer from the year 2007 till the year 2024; in
respect of rum from the year 2005 to the year 2025, and whisky from the year
2005 till 2013. In support thereof, the Chartered Accountant ( ‘CA’ ) certificate
in respect of the sales revenue generated from sale of beer under the mark
“GODFATHER” and Indian Manufactured Foreign Liquor (IMFL) has also
been enclosed. To corroborate actual manufacture sale, the excise declarations
in respect of beer and rum, the earliest being of the year 2004 and that of
whisky being the year 2005, have also been enclosed to the list of documents
filed by the plaintiff.
6.4. Predicated on the aforesaid facts and figures, learned senior counsel
contended that the mark “GODFATHER” is a well-known mark not only in
respect of manufacture of beer under Class-32, but can also extend to the
manufacture of rum and whisky in Class-33 as the goods manufactured under
both Classes are allied and cognate. In support of the same, learned senior
counsel stated that the plaintiff has been using the mark “GODFATHER”
even in respect of whisky and the total turnover of the IMFL sold under the
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said mark during FY 2006-26 is approximately Rs.18,09,55,648/-. He would
contend that the present case is not only of a valid registration of the mark
“GODFATHER” in respect of goods under Class-33, but also a case where
the said mark was indeed used for manufacture and sale of whisky falling
within Class-33. In support thereof, learned senior counsel invited attention to
certain invoices indicating sale of rum and whisky under the mark
“GODFATHER”.
6.5. Learned senior counsel asserted that no other manufacturer till date
has used the mark “GODFATHER” either in respect of products
manufactured either under Class-32 or 33 except for the plaintiff. In order to
support the said contention, the learned senior counsel had handed over the
Bench search reports which demonstrated that it is only the plaintiff which is
the registered proprietor of the mark “GODFATHER” till date. According to
learned senior counsel, the law only recognises statutory registration alone,
and not the user as such, though, in the present case, the plaintiff has placed
on record overwhelming documentary evidence to prove not only registration
but also establish the user of the said mark. Thus, the defendant would have
no right either statutory or in common law to usurp the mark
“GODFATHER”, which is a registered mark, and use it on its own products
manufactured under Class-33.
6.6. It was contended that the defendant has dishonestly adopted and used
the trademark “GODFATHER” with full knowledge of the existence of the
registration of the said mark in favour of the plaintiff. To push the point
across, learned senior counsel submitted that the defendant was incorporated
only in the year 2022, and has unlawfully adopted the mark “GODFATHER”
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for its products only in the year 2026, which is demonstrated by the fact that
the defendant filed its trademark applications on 19.01.2026 and 18.02.2026,
that too, on a ‘proposed to be used’ basis. Learned senior counsel would
contend that having applied for registration of the mark “GODFATHER”, the
defendant is estopped from challenging the validity of the plaintiff’s mark. He
relied on the judgment of this Court in Automatic Electric Ltd. v. R.K.
Dhawan & Anr.; 1999 SCC OnLine Del 27 .
6.7. In order to substantiate the issue of dishonest adoption, learned senior
counsel invited attention of this Court to the reply filed by the defendant no.1
in response to the objection raised by the Trade Mark Registry which cited the
plaintiff’s mark, and submitted that the defendant sought to overcome the
objection by claiming that the use of word “THE” before the mark
“GODFATHER” would clearly distinguish, and draw the distinction between
the mark of the plaintiff and that of the defendant. Learned senior counsel
would stoutly contend that the justification itself is dishonest per se . He
would contend that the use of the pre-fix “THE” would really not make any
difference at all for the reason that the prominent and dominant part of the
mark is “GODFATHER”, and the mark being registered in favour of the
plaintiff, could not have been adopted by the defendant.
6.8. Mr. J. Sai Deepak, learned senior counsel also contended that the
mark “GODFATHER” has a pan India reputation as it has been in use for the
last more than 40 years with the revenue generation of Rs.746 crores for the
FY 2024-25, apart from the expenses incurred in advertising coupled with
numerous awards that the plaintiff has received in so many years. He would
contend that allowing defendants to use the mark “GODFATHER” for
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manufacturing the sale of whisky would clearly allow the defendants to
unfairly ride on the plaintiff’s enormous goodwill in the alcohol sector. He
argued that the provisions of Section 29(4) of the Trade Marks Act, 1999 ( ‘the
Act’ ) are clearly attracted when the use of a mark would confer unfair
advantage on a third party or be detrimental to the distinctive character or
repute of the registered trademark. Thus, the defendant ought to be injuncted
from the use of the mark “GODFATHER”.
6.9. Relying upon Sections 29(1) and 29(2) of the Act, learned senior
counsel contended that “GODFATHER” being an ‘arbitrary’ mark is entitled
to a higher level of protection. He would forcefully contend that in the present
case, the parameters of both sections are clearly covered as (i) the mark
“GODFATHER” is registered in Classes-32 and 33; (ii) the marks of the
plaintiff and the defendant are identical i.e. “GODFATHER”; (iii) goods are
identical whether it is Class-32 or 33, and over and above all, it is a fact that
goods manufactured under Classes-32 and 33 are allied and cognate. On this
issue too, learned senior counsel would contend that the plaintiff is entitled to
an ad-interim injunction against the defendants.
6.10. In order to demonstrate that the defendant is using the mark
“GODFATHER” as a prominent mark, the learned senior counsel drew
attention to para 23 of the plaint where the trademark applications filed by the
defendant have been enumerated. He would stoutly contend that at least three
of the trademark applications clearly demonstrate that the mark
“GODFATHER” is being used by the defendant as a dominant and prominent
part of its mark/label. This coupled with the social media campaigns used by
the defendant to promote/launch its product also demonstrates that the mark
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“GODFATHER” is being given prominence to the products manufactured by
the defendant. In such circumstances, according to the learned senior counsel
it is clear that the defendant is attempting to piggyride on the coattails of the
plaintiff’s substantial goodwill and stellar reputation garnered over the last 40
years for the products manufactured in Classes-32 and 33 under the mark
“GODFATHER”. This, according to the learned senior counsel, is
impermissible in law.
6.11. Mr. J. Sai Deepak, learned senior counsel, vociferously contended that
beer and whisky are allied and cognate goods, and the test to be considered by
this Court would be the commercial reality test, which includes (a) the nature
of the goods which is beer and whisky, and both are alcoholic beverages; (b)
the consumers who are common to both; (c) trade channels and distribution
outlets too are common; and (d) the regulatory framework is common as both
products fall under the Excise Regulations in various States in India. Thus,
according to learned senior counsel, undoubtedly the products manufactured
under Classes-32 and 33 are clearly allied and cognate goods. Thus, on this
count too, the defendant cannot be permitted to use the mark
“GODFATHER”.
6.12. Insofar as the claim of passing off is concerned, learned senior
counsel contended that the goodwill is on the mark and not the products
which are manufactured by an entity, and on account of overwhelming
documentary evidence the plaintiff enjoys substantial goodwill and reputation
in the mark “GODFATHER”, which needs to be protected. The
misrepresentation, according to learned senior counsel, is demonstrable by the
use of the mark “GODFATHER” by the defendant, which may give an
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impression that the products of the defendant are either associated with or
licensed by the plaintiff, and would dilute the distinctive character of the
plaintiff’s mark. Learned senior counsel would contend that as a result of the
aforesaid acts, the use of the mark by the defendant would directly lead to
diversion of the consumers of the plaintiff to the defendant and also dilute the
distinctiveness of its mark.
6.13. At the end, learned senior counsel would also contend that the balance
of convenience is in favour of the plaintiff and the trademark dilution and
erosion of distinctiveness is a form of irreparable harm that may not be
compensated adequately by damages. He would contend that once a case of
infringement is made out, an injunction must ordinarily follow.
6.14. In support of his contentions, learned senior counsel relied upon the
following judgments:
a. Automatic Electric Limited vs. R.K. Dhawan & Anr., 1999 SCC
OnLine Del 27;
b. M/s South India Beverages Pvt. Ltd. vs. General Mills Marketing
Inc. & Anr., 2014 SCC OnLine Del 1953;
c. Radico Khaitan Ltd. v. Devans Modern Breweries Ltd., 2019 SCC
OnLine Del 7483;
d. Crompton Greaves Consumer Electricals Limited vs. V-Guard
Industries Limited, 2024 SCC OnLine Del 1838;
e. Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical
Laboratories, 1964 SCC OnLine SC 14;
f. Today Tea Ltd. vs. Today Foods Pvt. Ltd., 2019 SCC OnLine Del
8345;
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g. Preetendra Singh Aulakh vs. Green Light Foods Pvt. Ltd.,
MANU/DE/2853/2023;
h. Abercrombie & Fitch Co. vs. Hunting World, Inc. 537 F.2d 4 (2d
Cir. 1976);
i. Laxmikant V. Patel vs. Chetanbhai Shah & Anr., (2002) 3 SCC 65
j. Renaissance Hotel Holdings Inc. vs. B. Vijaya Sai, (2022) 5 SCC 1;
k. VIP Industries Ltd. vs. Carlton Shoes Ltd. & Anr., 2025 SCC Online
del 4620.
CONTENTIONS OF THE DEFENDANT:-
7. Appearing for the defendant Mr. Amit Sibal, learned senior counsel argued
as under:
7.1. At the outset, Mr. Sibal handed over the Bench a comparison chart of
the logo of both the parties as also the comparison of the products
manufactured by both. Learned senior counsel would contend that the
defendant has revised its mark from the existing mark “THE GLENWALK
BLENDED SCOTCH WHISKY” to “THE GLENWALK GODFATHER’S
BY SANJAY DUTT” (the revised mark), and has no intention to use the mark
“THE GODFATHER”, standalone. In fact, he stated that the defendant is
willing to withdraw the trademark application no.7466428 seeking
registration of the mark “THE GODFATHER” (wordmark) in Class-33 in
case the defendant is permitted to use the revised mark.
7.2. Notwithstanding the aforesaid, Mr. Sibal would contend that the
revised mark is composite, and has to be considered as a whole. It is the
contention of Mr. Sibal that when marks are considered as a composite mark,
the anti-dissection rule would become applicable. Applying such rule, it was
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contended that the marks of the plaintiff and the revised mark are visually,
phonetically, and structurally dissimilar. He would submit that while the
plaintiff claims the mark “GODFATHER” to be its source identifier, the
defendant claims that the source identifier in its composite mark is the
personality “Sanjay Dutt”, which is entirely distinct from the plaintiff.
7.3. Learned senior counsel would also contend that the prominent feature
in the revised mark of the defendant is the mark “THE GLENWALK” and the
word “GODFATHER’S” is in a smaller font followed by the source identifier
making it completely distinctive from that of the plaintiff’s mark
“GODFATHER”. Essentially, Mr. Sibal would emphasize that in a composite
mark, all the features and elements are to be taken as a whole, and not
dissected into different components to make out a case of infringement of one
such feature of the entire. He relied upon the judgment of the Supreme Court
in Pernod Ricard India Private Limited vs. Karamveer Singh Chhabra, 2025
SCC OnLine SC 1701 , particularly paras 33 to 33.4 in support of his
contention. In any case he would submit that the argument of the plaintiff that
its mark “GODFATHER” is infringed as it is a part of the defendant’s revised
mark contradicts the anti-dissection rule. For the said contention, he relied
upon the judgment of this Court in Modi Woodspace Private Limited vs. The
Registrar of Trade Marks, 2026 SCC OnLine Del 1835 .
7.4. Learned senior counsel invited attention of this Court to Section
2(1)(zb) of the Act which defines “Trademark”, and Section 2(1)(h) which
defines “deceptively similar” to submit that Sections 29(2)(a) and 29(2)(c) do
not apply at all to the facts of the case since the marks are neither identical nor
deceptively similar. Thus, according to learned senior counsel, the rival marks
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would neither deceive nor cause confusion in the minds of the consumers. For
the same reason, the provisions of Section 29(1) of the Act too, do not apply
to the facts of the present case.
7.5. Learned Senior Counsel also emphasized that, while the mark
“GODFATHER” is a dictionary word, the mark “THE GLENWALK” is a
coined word, and is associated with the defendant essentially identifying the
product to be Scotch whisky from Scotland. He would also contend that the
defendant has already established its primary brand, which is corroborated by
the sales revenue of Rs.212 Crores within the last three years. Thus, to that
extent, he would contend that the defendant has been able to establish
substantial consumer association in a short period of time. On the said basis,
he emphasized that there would be no likelihood of confusion in the minds of
the general public as to the products of the defendant, and those of the
plaintiff. Additionally learned Senior Counsel stated that the word ‘GLEN’
signifies whisky which is manufactured in Scotland, and as such the mark
“THE GLENWALK” also serves as a geographical identifier, which is
completely distinctive from the mark “GODFATHER” of the plaintiff. Thus,
the question of confusion is most unlikely on that count too.
7.6. Learned Senior Counsel also contended that the adoption by the
defendant is not dishonest for the reason that at the time of adoption, the
defendant could not find anyone using the mark “GODFATHER” for whisky
in India. However, the moment the defendant became aware of the mark
“GODFATHER” of the plaintiff, it filed a rectification petition seeking
cancellation of the mark “GODFATHER” of the plaintiff. He would also
contend that the plaintiff has never used the mark “GODFATHER” in relation
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to products under Class-33 since the year 2013 atleast. He would contend that
this is also corroborated by the fact that the plaintiff is not in possession of
any excise license or approvals for the manufacture of whisky after the year
2007. According to him, it would be safe to infer that the plaintiff has not
been manufacturing or offering for sale whisky under the mark
“GODFATHER” at least since the year 2013. Predicated thereon, he would
contend that there is absolute likelihood of cancellation of the mark
“GODFATHER” of the plaintiff in Class 33.
7.7. In order to substantiate the aforesaid argument, learned senior counsel
would invite attention to various invoices placed on record by the plaintiff
from the year 2007 to 2013 to submit that the same are blanks without
reference to any excise license or label approval, and therefore, cannot be
relied upon. In fact, he would state that all the sales are only to CRPF/BSF
within the State of Jammu and Kashmir, which are miniscule. Even sales for
“GODFATHER” Rum are highly limited, and only to aforesaid entities. He
would contend that the total sales of “GODFATHER” IMFL variants for the
period from 2006-2026 is only Rs.18 Crores without a detailed breakup. In
comparison, the defendant achieved a total sales turnover of Rs.212 Crores in
the last three years from its launch in the year 2023. Thus, according to him,
the plaintiff has failed to establish substantial sales of the products
manufactured in relation to Class-33.
7.8. In continuation of the aforesaid contention, Mr. Sibal also contended
that the plaintiff has not achieved any goodwill for the mark “GODFATHER”
in any of its products in Class-33. He would contend that even the plaintiff’s
official website does not list either “GODFATHER” whisky or
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“GODFATHER” rum as its products. Rather, the plaintiff has admitted to be
selling single malt whisky under the brand ‘Devans Gianchand’ and ‘Devans
Old Vat Premium’, and not under the mark “GODFATHER”. In order to
substantiate the said contention, learned senior counsel invited attention to
screenshots placed on record by the plaintiff, which demonstrate that the
plaintiff itself was promoting its product under the aforesaid brands, and not
using the mark “GODFATHER” for whisky. The same are extracted
hereunder:-
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7.9. In view of the above, Mr. Sibal would contend that even if the marks
are considered to be similar, though not admitted, there is no likelihood of
confusion between the rival marks. In support of his contentions, he relied
upon the judgment of Pernod Ricard (supra), MESO Private Limited vs.
Liberty Shoes Limited, 2019 SCC OnLine Bom 1506, Kaviraj Pandit Durga
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Dutt Sharma vs. Navaratna Pharmaceutical Laboratories, 1964 SCC
OnLine SC 14 , Khoday Distilleries Limited vs. Scotch Whisky Association,
(2008) 10 SCC 723, Carew Phipson Limited vs. Deejay Distilleries Private
Limited, 1994 SCC OnLine Bom 66 .
7.10. Insofar as the contention of the plaintiff that its beer under Class-32,
and the whisky of the defendant under Class-33 are allied and cognate goods
is concerned, Mr. Sibal would vociferously refute the same. He would
contend that manufacturers do not sell beer and whisky with the same name
as it may result in a disaster as they are both different classes of goods. He
also stated that there is a clear geographical difference in the origin of both
the products inasmuch as the mark ‘GLEN’ clearly denotes whisky from
Scotland while beer can be manufactured anywhere in the world. He also
submitted that both the products are stored and sold in separate retail outlets
having distinct storage requirements. In that, beer has to be kept refrigerated
on account of it being perishable and having a short shelf life, while whisky
can be kept without any such refrigeration and for a very long period of time.
He would emphasize that there is a difference in consumption too, in that,
while beer is consumed either in pints, cans or tap whereas whisky is
consumed in small quantities, often mixed. That apart, he stoutly contended
that there is a huge price variation between the two products, in that, while the
beer of the plaintiff may cost around Rs.100/- or little above that whereas the
whisky bottle of the defendant costs Rs.1750/- per unit. Even the trade dress
is entirely different and easily discernable. According to Mr. Sibal, both
products are not even in the same Class. In support of his contentions, learned
senior counsel relied upon the judgment in the case of Caledonian ,
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particularly para 38, 39 and 53.
7.11. In addition to the aforesaid submission, learned senior counsel would
also submit that apart from the difference in geographical origin, both the
products completely differ in the strength of alcohol present in the said
products. While beer ordinarily contains 8% alcohol, the whisky
manufactured by the defendant contains 48% alcohol. In other words, learned
senior counsel emphasized that the consumers clearly would not get confused
as to the products they wish to purchase even if both products are commonly
found in the same retail store. He greatly emphasized on the fact that the
consumers of Scotch whisky are ordinarily educated, rich and employ a
higher degree of care while selecting products and form a discerning
consumer base. According to him, a consumer of whisky would surely not get
confused into buying beer and vice-versa. Thus, the contention that the mere
use of the mark “GODFATHER”, that too in a composite mark of the
defendant would cause substantial confusion on account of deceptive
similarity, is a bogey, which must be rejected.
7.12. Relying on the judgment in Kaviraj Pandit (supra) , learned senior
counsel would contend that the issue of passing off may not be attracted in the
present case in view of the “ added matter ”, which may be sufficient to
distinguish the goods of the defendant from that of the plaintiff. To make that
good, learned senior counsel would contend that there is a vast difference in
the shape of the bottle, the trade dress is entirely different, and while the
plaintiff’s mark has an old man, the defendant’s revised mark has the famous
personality of “Sanjay Dutt”. These features, according to learned senior
counsel, would constitute ‘ added matter ’, and are sufficient to distinguish the
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whisky of the defendant from the beer of the plaintiff.
7.13. Learned senior counsel vehemently contended that since
‘GODFATHER’ is a dictionary word, the plaintiff cannot claim any
exclusivity unless it is able to establish that the said mark has acquired
secondary significance. As per Mr. Sibal, the plaintiff has failed to place on
record any evidence to demonstrate that the mark “GODFATHER” has
acquired any secondary significance insofar as manufacture and sale of
whisky is concerned. All that the plaintiff has been able to, without admitting,
demonstrate is that its beer under the mark “GODFATHER” is immensely
popular. That by itself, according to learned senior counsel, does not connote
secondary significance. Thus, in respect of goods under Class-33, the plaintiff
has not made out any case for injunction on infringement of its mark.
7.14. Relying on Vishnudas Trading as Vishnudas Kishendas vs. Vazir
Sultan Tobacco Co. Ltd., Hyderabad & Anr., (1997) 4 SCC 201 , learned
senior counsel submitted that similar trademarks can co-exist with different
proprietors for different products even in the same Class.
7.15. Predicated on the aforesaid contentions, learned senior counsel would
contend that no case for ad-interim injunction is made out by the plaintiff, and
as such the application be dismissed.
ANALYSIS AND CONCLUSION
8. This Court has heard the arguments of Mr. J. Sai Deepak, learned senior
counsel for the plaintiff, and Mr. Amit Sibal, learned senior counsel for the
defendant, and with their valuable assistance perused the record, and considered
the judgments relied upon by the parties.
9. Having regard to the various aspects of the dispute and the argument
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addressed it is deemed appropriate to deal with the issues ad seriatim .
I. Non-use of the mark:-
10. Before adverting to the facts in controversy, it is deemed appropriate to
appreciate the provisions of Section 18 of the Act. Section 18 provides that any
person claiming to be the proprietor of a trademark used or proposed to be used by
him and is desirous of registering it, may apply to the Registrar for such
registration in the prescribed manner. As per Section 18(4) of the Act, the Registrar
may, subject to the provisions of the Act, refuse the application or may accept it
absolutely or subject to amendments, modifications, conditions or limitations as
found fit. Such registration under Section 18 of the Act provides certain rights as
stipulated in Section 28 of the Act. Section 28 provides that the registration of the
mark would give to the proprietor an exclusive right to use the trademark in
relation to the goods or services in respect whereof the mark is registered and
obtain relief in respect of infringement of the said mark. Of course, this right is
subject to any conditions or limitations under which such registration has been
granted.
11. Cumulative reading of the aforesaid provisions leaves no manner of doubt
that it is the mere registration of a mark under Section 18 which confers exclusive
rights under Section 28 of the Act. Neither Section 18 nor Section 28 of the Act
contemplates use of such trademark in the ordinary course subject whereto alone,
the exclusive right under Section 28 can be exercised by any registered proprietor.
In other words, the non-use of the registered trademark by a proprietor would not,
ipso facto, deprive or disentitle a registered proprietor from exercising the right to
sue a third-party for infringement of the said mark. The Supreme Court in Gujarat
Bottling Co. Ltd. v. Coca Cola Co., (1995) 5 SCC 545, had observed as under:
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“ 11. …..Under the Act registration of trade marks is not compulsory and as
regards unregistered trade marks, some aspects are governed by the Act while
others are still based on common law. In respect of a trade mark registered
under the provisions of the Act certain statutory rights have been conferred on
the registered proprietor which enable him to sue for the infringement of the
trade mark irrespective of whether or not that mark is used. The Act also
makes provisions whereunder registered proprietor of a trade mark can permit
any person to use the mark as a registered user and for that purpose provisions
are made in Sections 48 to 54 of the Act. In clause (m) of Section 2 the
expression “permitted use” in relation to a registered trade mark has been
defined to mean “(i) the use of a trade mark by a registered user of the trade
mark in relation to goods — (a) with which he is connected in the course of
trade; and (b) in respect of which the trade mark remains registered for the
time being; and (c) for which he is registered as registered user; and (ii) which
complies with any conditions or restrictions to which the registration of the
trade mark is subject…..”.
[emphasis supplied]
12. Section 29 of the Act contemplates various situations and scenarios whereby
a person, not being a registered proprietor or a person using by way of permitted
use, uses in the course of trade, a mark which is identical with or deceptively
similar to the trademark in relation to goods or services of which the trademark is
registered, such use may constitute infringement. Sub-section (4) of Section 29 of
the Act contemplates infringement if the mark is identical with or similar to the
registered mark; is used in relation to goods and services which are not similar to
those for which the mark is registered and the registered mark has reputation in
India and a use of said mark without due cause takes unfair advantage of or is
detrimental to the distinctive character or repute of the registered trademark. In
other words, the conditions which are required to be considered by the Court in
respect of violation of sub-sections (1) and (2) of Section 29 of the Act are met if
the marks are identical and/or the goods or services are similar or identical. Sub-
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section (4) of Section 29 would contemplate identical or similar mark to the
registered trademark and used in relation to goods and services which may not be
similar but would fall within the term “ allied and cognate goods ” and such use
would take unfair advantage of or is detrimental to the distinctive character or
repute of the registered trademark.
13. It cannot be disputed, atleast at this stage, that the plaintiff has registration
for the mark “GODFATHER” in relation to goods manufactured under Class-32
since the 1980s, and also has registration for the same mark in relation to goods
manufactured under Class-33 [alcoholic beverages (except beer)] since 2005. It is
also not disputed that the said marks for Classes 32 and 33 are valid till date with
no entity having challenged or filed a rectification petition against the said marks,
except the defendant who has filed it only on 12.03.2026. Till such time, the
rectification petition is disposed of one way or the other, the registration of the
mark “GODFATHER” under Classes 32 and 33 shall remain valid and enforceable
under the provisions of Section 28 read with Section 29 of the Act. The mere filing
of a rectification petition, unless it is tested and allowed in accordance with law,
cannot constitute a presumption against the validity of a mark which is registered
under Section 18 of the Act. Therefore, the registrations of the mark
“GODFATHER” under Classes 32 and 33 in favour of the plaintiff shall be
construed to be valid and enforceable. Mere non-use of a mark without being
validly rectified under the provisions of the Act, cannot be deemed to disentitle a
registered proprietor from enforcing all and any rights conferred upon it by virtue
of Section 28 of the Act. The facts of the present case do not circumambulate
within the provisions of sub-section (3) of Section 28 of the Act.
14. Notwithstanding the aforesaid observation regarding validity and
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enforceability of the rights of a registered proprietor under Section 28 of the Act
for acts of infringement falling within Section 29 of the Act despite non-use of the
registered mark, the plaintiff has, in the present case, placed on record certain
invoices demonstrating such sales under the mark “GODFATHER” for rum and
whisky in Class-33, and also has filed a CA certificate in support thereof for the
years 2007 to 2013. Though learned senior counsel for the defendant had
vehemently attacked and attempted to discredit the invoices, etc., placed on record
by the plaintiff, however, at this stage, this Court is not in a position to conduct a
mini-trial for the said purpose, and is required only to appreciate the said evidence
on a prima facie basis.
15. Whether the plaintiff did or did not use the mark “GODFATHER” in
relation to goods under Class-33, and as to whether the invoices, etc., indicating
sales for the period from 2007 to 2013 have any probative value, are matters which
may require evidence, and would be best appreciated at the time of trial. At this
stage, what the Court would contemplate is the positive assertion of the plaintiff
that it has in fact put to use the mark “GODFATHER” in relation to the goods
manufactured in Class-33 i.e. whisky and rum; the documents in the nature of sales
invoices, and CA certificate which would prima facie lend credence to such use.
Thus, unless the mark “GODFATHER” in relation to goods under Class-33 is
rectified or cancelled in accordance with law, this Court is of the prima facie view
that the plaintiff has indeed used the mark “GODFATHER” to manufacture and
offer for sale products falling within Class-33 i.e. whisky and rum. For a registered
proprietor to sue for infringement of its mark, particularly in the present
circumstances, the question of the extent of sales, or the period when such sale
took place, may not be a relevant consideration at this stage.
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II. Allied and Cognate Goods:
16. So far as the issue as to whether beer falling within Class-32, and whisky
falling within Class-33 are allied and/or cognate goods is concerned, it would be
relevant to examine the facts arising in the present case. It cannot be doubted that
beer and whisky both are alcoholic beverages except the alcoholic content which
may vastly differ. None of the parties could demonstrate, particularly the
defendant, that the trade channels or the retail outlets are different or distinct at
least in India. It is common knowledge that both products are available in the same
retail shops, bars, restaurants etc. As stated by the plaintiff, the regulatory
framework for both the products too is common.
17. Having said that, it has to be appreciated that the price variation is like a
deep crevice between both the products. It also has to be acceded that a consumer
who may want to consume whisky would surely not seek to purchase beer or vice-
versa . Though the products may be available in the same outlet, yet they would be
available on separate and distinct shelves. Surely a consumer who may want to
purchase beer which may cost anywhere between Rs.100/- to 150/- shall not end
up purchasing a bottle of whisky which costs around Rs.1750/-.
18. To the argument of Mr. J. Sai Deepak, learned senior counsel as to the goods
being manufactured by both parties being allied and cognate is concerned, this
Court is of the prima facie opinion that having regard to the fact that beer and
whisky both are undoubtedly alcoholic beverages; the fact that trade channels and
distribution outlets are common; both products are governed by the same excise
regime, beer and whisky would be allied and cognate products. The mere fact that
there is a huge price variation between the two products or that the consumers of
whisky may appear to be elite or distinct or that it is available in separate counters
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though in the same retail stores, has no nexus with the products themselves. These
aspects surely are not a metric to decide whether the products are allied and
cognate. Essentially, it is the kind, nature and the intended use of the goods which
may constitute to be a deciding factor to determine whether they are allied and/or
cognate or not. Concededly, both products are alcoholic beverages except to the
percentage of alcohol present in them, thus, there is no reason nor any material
placed on record to convince this Court otherwise. None of the parties have
disputed that the nature of both products are similar, in that both are intoxicants;
consumed by members of various strata of the society to enjoy, relax and get
inebriated. It may be worthwhile to appreciate the ratio laid down in the
judgements of this Court in FDC Limited v. Docsuggest Healthcare Services Pvt.
Ltd., 2017 SCC OnLine Del 6381, Raj Kumar Sharma v. Sandeep Kumar, 2023
SCC OnLine Del 492, and Radico Khaitan Ltd. v. Devans Modern Breweries
Ltd., 2019 SCC OnLine Del 7483 on the construction of the words “allied and
cognate goods”. The relevant paragraphs are extracted hereunder:
FDC Limited v. Docsuggest Healthcare Services:
“ 51. There can be no doubt, and it needs no discussion to say that the mark
“Zifi” of the plaintiff and “Ziffi” of the defendant are phonetically, structurally
and visually similar. In any event, this aspect is also discussed a little later.
The prime issue in this case, therefore, is whether the goods of the plaintiff and
the services of the defendants are allied/cognate or not. Allied/cognate goods
or services, as understood from the material referred to below, are those
goods/services which are not identical, but can be said to be related or similar
in nature (See McCarthy on Trademarks and Unfair Competition, Fourth
Edition, Vol 5 ). The Shorter Oxford English Dictionary on Historical
Principles Fifth Edition 2002, Vol. 1. defines the term “Allied” as “connected
by nature or qualities; having affinity” and the term “Cognate” as “akin in
origin, nature or quality”. Reference may also be made to New Webster's
Dictionary and Thesaurus of the English Language, 1992 which defines
“Allied” as “relating in subject or kind” and “Cognate” as “1. adj. having a
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common ancestor or origin (of languages or words) having a common source
or root (of subjects etc.) related, naturally grouped together.”. Cognate
goods/services can be described, inter alia, as goods or services which have a
trade connection - as in glucose and biscuits (See Corn Products Refining Co.
v. Shangrila Food Products Ltd., AIR 1960 SC 142) or which are intended for
the same class of customers - as in television picture tubes (parts thereof, video
tapes and cassettes and television tuners etc.) and televisions, tuners and T.V.
Kits (See Prakash Industries Ltd. v. Rajan Enterprises (1994) 14 PTC 31), or
are complementary to each other - as in toothbrushes and toothpaste (See HM
Sariya v. Ajanta India Ltd. (2006) 33 PTC 4).
52. In the present case, the plaintiff is using the registered mark ‘Zifi’ for
goods falling under Class 05 of the Schedule of the Act i.e. pertaining to
pharmaceutical preparations. On the other hand, the defendants are using the
mark ‘Ziffi’ for booking of appointments for doctors, diagnostics, spas and
salons, and have applied for registration under Class 35 and 42 of the
Schedule of the Act. It is the submission of the defendant that goods and
services falling under different classes cannot be allied and cognate. I do not
find merit in this submission. The classification of goods and services under
Section 7 of the Act is not the criterion for deciding the question of similarity in
goods/services. Reliance may be placed on K.C. Kailasam/Ramu Vedaraman's
st
Law on Trade Marks & Geographical Indications 1 Edition, 2003 wherein,
the learned author on Page 180 has stated as under-
“ Classification of goods given in the rules not the criterion
Whether or not two sets of goods or services are of the same description is
not be decided on the basis of the classification of goods and services given in
th
the 4 schedule to the Trade Marks Rules, 2002. The description of goods may
be narrower or wider than any of the classes according to the circumstances of
the case. As was observed by LINDLEY J., in the Australian Wine Importers
Trade Mark case [(1889) 6 RPC 311]. “If you come to look at that
classification, you will find goods of the same description, in one sense, in
different classes; and you will find goods of different description in the same
class”.”
Similarity between goods and services
53. Now, to determine whether the defendants' services are allied and cognate
to plaintiff’s goods, it is essential to first discuss the law on similarity in
goods/services in trademarks and its development so far. While the Act is silent
on the factors to be considered for similarity in goods/services, the Courts in
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India - relying upon international cases and literature, have consolidated the
guiding principles and factors found relevant in ascertaining the similarity
between goods/services. They are as follows:
1. In Assam Roofing Ltd. v. JSB Cement LLP 2015 SCC OnLine Cal 6581, the learned
Single Judge in Para 80 observes- “ The test of similarity of goods is looked at
from a business and commercial point of view . The nature and composition of
the goods, the respective uses of the articles and the trade channels through
which they are brought and sold all go into consideration in this context”.
(emphasis supplied)
th
2. In Kerly's Law of Trade Marks and Trade Names, 15 Edition 2011, the learned
Author in Para 9-073 has stated as under : -
“As para.23 of the decision in Canon v. MQM (1999) R.P.C. 117 makes
clear, all factors relating to the goods or services themselves must be taken
into account. These include, inter alia, their nature, their intended purpose,
their method of use and whether they are in competition with each other or
are complementary . It is clear that goods in different classes may nevertheless
be considered similar, and likewise that goods or services within the same
class may be found to not be similar.” (emphasis supplied)
3. In Para 9-075, the Learned Author has mentioned some illustrations on similar
goods or services including under Para 9-078 ““Services offered by beauty
salons; solarium services” similar to “business assistance with beauty
preparations, sales” and “beauty preparations, perfumery, cosmetics dietetic
substances””. The said illustration sources from the case of Beauty Shop
Application v. Opposition of Evora BV [1999] E.T.M.R. 20, wherein the Office
for Harmonization in the Internal Market (Trade Marks and Designs) also
known as the Opposition Division held the defendant's services to be similar to
the plaintiff's services and goods by observing that “the goods and services of
the conflicting marks could be offered together and be intended for the same
public.”
4. In British Sugar Plc. v. James Robertson & Sons Ltd. [1996] R.P.C. 281 at 294-
297, relied upon in Balkrishna Hatcheries v. Nandos International Ltd. 2007
SCC OnLine Bom 449 and Advance Magazine Publishers, Inc. v. Just Lifestyle
Pvt. Ltd. 2016 SCC OnLine Bom 8417, the court laid down the objective test
for similarity of description of goods/services as follows:
(a) “The uses of the respective goods or services;
(b) The users of the respective goods or services;
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(c) The physical nature of the goods or acts of service;
(d) The trade channels through which the goods or services reach the market;
(e) In the case of self-serve consumer items, where in practice they are
respectively found or likely to be found in supermarkets and in particular
whether they are, or are likely to be, found on the same or different shelves;
and
(f) The extent to which the respective goods and services are in competition with
each other : that inquiry may take into account how those in trade classify
goods, for instance whether market research companies, who of course act
for industry, put goods or services in the same or different sectors.”
th
5. Kerly 15 ed. while relying upon Canon (supra), further observes in Para 9-065
that the element of distinctive character of a trademark and its reputation is
also viewed when determining similarity between the goods and services and
whether such similarity is sufficient to give rise to the likelihood of confusion.
54. On the application of aforesaid principles, I am of the view that the
plaintiff's goods are similar to and associated with the defendants' services.
The reasons for the same are:
(i) Respective uses of goods/services : Plaintiff's products are a wide range of
medicines used to treat several diseases including typhoid, bronchitis, fever &
infection, etc. Defendants' services, inter alia, includes the fixing of
appointment of doctors/diagnostics for medical check-ups to be treated for
several diseases, including the ones treated by plaintiff's medicinal range, with
the mark in question;
(ii) Intended Purpose : Plaintiff's products intend to achieve the cure/prevention of
several diseases. Defendants' services are meant for booking of appointment
of, inter alia, doctors/diagnostic for curing and possibly further prevention of
several diseases, including the ones treated by the plaintiff's medicines under
the mark in question;
(iii) Respective Users of goods/services : Users of plaintiff's products are patients.
Users of defendants' services are also, inter alia, patients. They are health care
seekers. The target customer base and clientele of the two marks is likely to
have an overlap, especially amongst doctors, and consumers/patients availing
services of doctors, diagnostic clinics and healthcare services. A consumer of
the plaintiffs products (though they are prescription drugs) may visit the
defendants’ website and is likely to get confused and mislead into thinking that
the services offered by the defendants are coming from the same source as the
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goods/medicines of the plaintiff.;
(iv) Physical Nature of goods/services : Plaintiff's products are medicines which
are prescribed by doctors. Defendants' services are online booking services for
obtaining appointments, inter alia, with doctors/diagnostic centres, which
requires the user of the services to visit the clinic/hospital to get him/her
treated and get prescribed medicines by the doctor, if required;
(v) Sector : Both the goods viz. medicines with the mark in question, and services
of the defendants under the impugned mark pertain to the healthcare and
medicinal sector;
(vi) Trade Channels : The plaintiff's products are medicines which are available at
dispensaries; at the chemists, or; at the doctor's clinic. Defendants' services
are to provide online appointment of doctors, who may prescribe the user of
such service with any of the plaintiff's product. Moreover, since both fall under
the same sector of healthcare, it is difficult to negate that there cannot be any
overlap in the two. It is also a fact - of which the Court can take notice that
organizations who have established themselves in a particular field have the
tendency to diversify into related fields. Thus, an unwary customer of the
plaintiff is likely to draw an association with the service offered by the
defendant - also in the healthcare sector, which included fixing of Doctors
appointments;
(vii) Reputation : The sales figures; promotional expenses; the advancement of the
Zifi products for adult and pediatric range of medicines; trademark
registrations; the spread of the Zifi products and Zifi family of trademarks in
India, and to countries outside India, as well as the international and national
accreditations and awards received by the plaintiff, prima facie, establish that
the plaintiff has built a strong reputation with its distinctive mark “Zifi” within
the medicinal and pharmaceutical sector in the past 17 years in India. The
mark, by virtue of its prolonged use and arbitrary adoption, has maintained an
inherently distinctive character, such that a user is likely to get confused if he
were to see the identical/similar mark being used for related services in the
healthcare space, like that of the defendants.
It is, thus, apparent that there is similarity and association between the plaintiff's
products and the defendants' services.”
[emphasis supplied]
Raj Kumar Sharma v. Sandeep Kumar
“ 18. The nature of services provided by the petitioner and Respondent 1 are
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identical, as both are providing restaurant services. Though the petitioner's
st
application, dated 31 August 2020, for registration of the device
st
mark, and the respondent's application dated 1 February 2021 for
registration of the ‘PIZZA GALLERIA’ word mark were for different classes,
that cannot make any difference, as the applicability of Section 11(1) is not
dependent on the class in respect of which the marks are registered, or
registration of the marks is sought. Even otherwise, the nature of goods and
services covered by Classes 30 and 35 are allied, the former relating to “flour
and preparations made from cereals; bread, pizza, pastry and confectionery”
and the latter to “Retail Shop or Online Retail Shop of Food Items, Mobile
Retail Food Store Services”. Where the goods and services to which the
competing marks relate are allied, the chance of confusion or deception stands
enhanced, as held in Mex Switchgears Pvt. Ltd. v. Omex Cables Industries
{(2017) 71 PTC 465 (Del)} and Natures Essence Private Limited v. Protogreen
Retail Solutions Private Limited {(2021) 86 PTC 225 (Del)}”
Radico Khaitan Ltd. v. Devans Modern Breweries
“THE SUPREME COURT HAS HELD THAT PROTECTION OF A
REGISTERED TRADE MARK IS NOT DEPENDENT ON ITS USE
58. The Apex Court in Gujarat Bottling Co. Ltd. v. Coca Cola Company
(1995) 5 SCC 545 has held that protection of a registered trade mark is not
dependent on its use. The relevant portion of Gujarat Bottling Co. Ltd. v. Coca
Cola Company (supra) is reproduced hereinbelow:—
“11.…In respect of a trade mark registered under the provisions of the Act
certain statutory rights have been conferred on the registered proprietor which
enabled him to sue for the infringement of the trade mark irrespective of
whether or not mark is used.…”
Considering the ratio laid down by the Coordinate Bench of this Court in the
abovementioned judgments, prima facie , the product beer manufactured by the
plaintiff, and whisky manufactured by the defendant appear to be allied and
cognate goods. (Also see: Today Tea Ltd. vs. Today Foods Pvt. Ltd., 2019 SCC
OnLine Del 8345; Preetendra Singh Aulakh vs. Green Light Foods Pvt. Ltd.,
MANU/DE/2853/2023)
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III. Anti-Dissection Rule:
19. Notwithstanding the aforesaid distinction, one cannot overlook the fact that
the plaintiff is the registered proprietor of the mark “GODFATHER” in Class-33
also since 2005, and had put such mark to use in the trade for manufacture of
whisky and rum, howsoever minuscule the sales may have been. Thus, the
provisions of Section 29(1) and (2) are met to some extent. Though learned senior
counsel for the defendant had placed on record the revised mark ‘proposed to be
used’ in case this Court is inclined to permit such use, the fact that the defendant is
still using the mark “GODFATHER’S” may still, prima facie, amount to
infringement of the registered trademark “GODFATHER” of the plaintiff. Though
the revised mark has a smaller font and is written in a stylised manner, the fact that
it retains the essential characteristics of the mark “GODFATHER” of the plaintiff
does not get diluted. It is not disputed by the defendant that its application seeking
registration of its mark was submitted on 19.01.2026 and 18.02.2026, that too, on a
proposed to be used basis.
20. It was forcefully argued by the learned senior counsel for the defendant that
its mark is a composite mark, and therefore, the claim of infringement of one
element of the entire whole would be contrary to the principle of anti-dissection
rule. Though the argument was indeed attractive, however, cannot be acceded to
for the reason that the mark “GODFATHER” in the original mark was quite
prominent, and though in the revised mark is in a smaller font, yet, catches the eye
of a general consumer. Though the defendant has very fairly attempted to down
play the said mark by using a subscript “BY SANJAY DUTT”, yet the emphasis
on the word “GODFATHER’S” does not get diluted and remains a prominent part
when looked at from a general consumer’s point of view. It has to be borne in mind
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that the mark of the plaintiff is registered as a word mark, and therefore, even if the
rival mark is stated to be composite, if the essential element, characteristics and
feature of the word mark is available in the composite mark, the principle of anti-
dissection rule would not apply. The defendant had relied upon the judgment of the
Supreme Court in Kaviraj Pandit (supra) in support of its contentions. Although
there cannot be any quarrel with the proposition laid down by the Supreme Court
in Kaviraj Pandit (supra) , in fact, in the present case, this Court has prima facie
found that the essential and prominent feature of the defendant’s mark is
deceptively similar to that of the plaintiff, and thus, the said proposition may not be
applicable. Similarly, the ratio laid down by this Court in Modi Woodspace ( supra )
would also not be applicable to the facts of the present case having regard to the
specific finding by this Court.
21. Learned senior counsel for the defendant had also argued, although without
admitting, that even if the marks are taken to be similar, there is no question of
confusion that the marks may create in the minds of the general public. He had
relied upon the judgment in the case of Pernod Ricard (supra) in support of the
said contention. This Court has perused the judgment in Pernod Ricard (supra),
and finds that the Supreme Court has propounded that in disputes involving
composite marks, the mere presence of a shared or generic word in both marks
does not, by itself, justify a finding of deceptive similarity. It was cautioned that
the Courts must undertake holistic comparison examining visual, phonetic,
structural and conceptual elements to assess whether the overall impression created
by both marks is likely to mislead an average consumer with average intelligence
and imperfect memory. At the same time, the Supreme Court also had considered,
particularly in para 33, the Dominant Feature Test and observed that the said
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Dominant Feature may serve as an analytical aid in the holistic comparison of
marks. It was further observed that emphasis on a dominant feature alone cannot
be determinative and the ultimate test remains whether the mark, viewed as a
whole, creates a deceptive similarity to mislead the average consumer.
22. Keeping in mind the ratio laid down above in Pernod Ricard (supra) , this
Court in para 19 above has examined both the rival marks, and opined that the
essential element, characteristics and feature of the mark “GODFATHER” of the
plaintiff is available in the defendant’s composite mark as a prominent element. It
is pertinent to bear in mind that in the original mark of the defendant, the mark
“GODFATHER” clearly is prominent and appears to be an essential part of the
said mark. Even otherwise, the defendant cannot dispute the fact that it has indeed
applied for registration of the mark “THE GODFATHER” that too on a ‘proposed
to be used’ basis. Thus, in the factual context, the ratio laid down by the aforesaid
judgments may not be attracted to the facts of the present case.
23. Apart from the above, it is not disputed by the defendant that the Trade Mark
Registry had objected to the registration of its mark vide the examination report
which cited the mark “GODFATHER” of the plaintiff. Vide its reply dated
18.02.2026, the defendant sought to give explanation and justification stating that
the conflicting marks are entirely dissimilar in the essential features, overall getup,
pronunciation and conceptual meaning. The defendant also contended that it has
added the definite article “THE” to submit that the said article creates a distinct
commercial impression and while the dominant word “GODFATHER” is
common, the prefix imparts a separate identity and affects phonetic articulation,
visual appearance and conceptual meaning. Predicated thereon the defendant
sought registration for the composite mark “THE GODFATHER” in Class 33.
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24. The aforesaid reply clearly brings to fore that the defendant was very well
aware of the marks of the plaintiff registered even in Class-33, and yet proceeded
to or attempted to launch its products including the mark “GODFATHER” within
the composite mark. Faced with such facts, the bonafide in adopting the mark
“GODFATHER” in any form, on the part of the defendant, appears to be doubtful.
This Court indeed appreciates the fairness with which Mr. Sibal had submitted, on
instructions, that the defendant may withdraw the trademark application
no.7466428 seeking registration of the mark “GODFATHER” in case the revised
mark is permitted to be used by the defendant. However, for the aforesaid reasons
this Court is unable to accede to the said submission.
IV. Likelihood of Confusion:
25. Mr. Sibal, learned senior counsel had extensively relied upon the judgment
of UK Court in Caledonian (supra) case for the purposes of arguing that there
possibly cannot be any confusion in the minds of the consuming public as to the
dissimilarity in the nature and use of beer and whisky. This Court has carefully
perused the said judgement, however, finds that the facts in both cases differ. In
that case, while the applicant sought registration of the mark “CALEDONIAN” for
whisky in Class-33, the opponent was registered for the mark “CALEDONIA” for
beer in Class-32. In a detailed judgement, the learned author had examined the
facts and concluded that though the marks are quite similar, yet, the element of
confusion from the standpoint of the consuming public is very low. In particular, it
was observed in paras 39 and 53 as under:
“39. Having said that, there is a notable difference in the alcoholic content of
the goods at issue. In retail premises, spirits are usually sold in large bottles,
while beers are sold in smaller bottles or cans. In restaurants and bars, gin
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would normally be dispensed into a tall glass and mixed with other spirits or a
non-alcoholic beverage (such as tonic water) to make a long drink. The same
may apply to whisky but whisky is also frequently sold for consumption by
itself. Spirits are generally dispensed in small measures, often from optics
displayed behind the bar. By contrast, beers would customarily be sold in half
pint or pint measures dispensed from a tap, or be sold in bottles. While
beverages containing beers are likely to consist of beers mixed with non-
alcoholic beverages (for example, with lemonade to make shandy), like beer
they would be sold in half pint or pint measures and are likely to be perceived
as beer-based beverages. In retail premises, the goods at issue are not
normally sold on the same shelf and, while I accept that they may be sold in the
same aisle, there is ordinarily a clear demarcation between the area for spirits
and that for beers and beverages containing beers. Although the base
ingredients for all the goods at issue may be the same (e.g. grain or malt), the
production methods are different, gin and whisky being made by distillation
and beers by fermentation. I do not consider that there is a complementary
relationship between the goods of the earlier mark and those in the applied-for
specification, neither being essential or important for the consumption of the
other. It is possible that there may be a degree of competition between the
goods issue, though I do not consider that the competitive choice between
drinking beers (c beverages containing beers) on the one hand and gin or
whisky on the other will be commonly made. In my experience, producers of
beers do not routinely also produce either gin or whisky, or vice versa. Bearing
all of the above in mind, I find that the goods are similar but only to a low
degree.
xx xx xx
53. Despite the fact that the marks are highly similar and that the goods will be
purchased with an average degree of attention, I consider that there is no
likelihood of confusion. This is because the similarity between "beers, lagers,
ales, porters and beverages containing beer, lager, ale or porter" on the one
hand and "gin, Scotch Whisky produced in Scotland" on the other is of the
lowest degree. The goods will be separated from one another at the retail level
and the average consumer will not mistakenly purchase gin in the belief that it
is beer or a related product. In restaurants and pubs, the goods will generally
be on display, often in different areas of the bar, and even if they are requested
orally, other indications will normally ensure that the bartender is aware of
what the consumer requires (for example, whisky or gin will be requested in
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quantities such as single, double or large and may be requested with a mixer,
whereas beer will be requested by the bottle or by the pint or half pint). Even if
the consumer does become aware of both products, I do not consider that s/he
would perceive them as coming from the same or economically linked
undertakings. Rather, the low degree of similarity between the goods, coupled
with the average distinctive character of the earlier mark, means that the
average consumer will attribute the similarity between the trade marks to
coincidence not economic connection. The opposition fails under section
5(2)(b).”
26. The aforesaid decision is distinguishable. In the present case, the plaintiff is
not only registered in Class-33, but has also placed on record invoices, and CA
Certificate for the relevant period demonstrating actual sales of rum and whisky
manufactured under the mark “GODFATHER”. Whereas, in the judgment cited,
the opponent was not registered in Class-33, which in the opinion of this Court is a
significant difference. It also appears that the retail outlets in UK for the products
are separate unlike in India where the distribution channels, and retail outsets are
common, apart from the products, i.e., beer and whisky, being commonly available
in bars, pubs, restaurants, etc., and thus, the likelihood of association by the
consumer is greater. Moreover, even otherwise, this Court as explained in the
above paras, is of the firm opinion that, in order to ascertain whether goods are
allied and cognate, the perception of the consumer is not the metric, rather, it is
parameters like the kind, nature and intended use of the products, which would
form the benchmark. Just so that the perception of this Court is understood, it may
be worthwhile to reproduce the rival marks in the following comparison table:-
Plaintiff’s Mark Defendant’s Old Marks
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Revised mark of the defendant:-
27. Manifestly, the prominent and dominant or essential feature of the mark of
the defendant is the word “GODFATHER”, which is identical/similar to the
registered mark of the plaintiff. So far as the said mark is concerned, the same is
visually, structurally, and phonetically identical. The use of the mark ‘The
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Glenwalk’ as can be observed is not prominent and rather appears to be in the
backdrop. Even the second logo of the defendant suffers from similar lacunae.
Thus, so far as the original mark for which registration is sought by the defendants
is concerned, there is a deceptive similarity with the mark GODFATHER of the
plaintiff.
28. During the course of argument, on one such occasion, learned senior counsel
for the defendant had proposed a revised mark, without prejudice to their rights, to
submit that in case the Court would be inclined, the defendant would launch its
product under the revised mark. This Court has also compared the mark of the
plaintiff with a revised mark of the defendant. Though the font size of the mark
‘The Glenwalk’ has been substantially increased and the size of the mark
GODFATHER has been decreased, yet, in the entire composite mark the word
GODFATHER or GODFATHER’S appears to be bold and prominent,
notwithstanding the addition of the apostrophe ‘S’ or even the stylisation of the
said word. It needs emphasis that the plaintiff's mark “GODFATHER” has attained
substantial reputation and immense goodwill in the market in the last forty years of
such use. Thus, when a general consumer with average intelligence and imperfect
recollection perceives the products of the defendant, even though the product may
not be identical, however, is likely to believe that the product is somehow
associated with or emanates from the plaintiff. Thus, the ingredients of Section
29(4) of the Act appear to be met.
V. Conclusion:
29. At this stage, there is no material on record for the Court to doubt that the
plaintiff has manufactured beer falling in Class-32 under the mark
“GODFATHER” for the last 40 years. Equally, there is no reason for this Court to
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even prima facie reach a conclusion that the gross sales turnover achieved by the
plaintiff for manufacture of sale of beer under the mark “GODFATHER” to the
extent of Rs.746 crores for FY 2024-25 or the expenditure incurred in sale
promotion to the extent of Rs.4 crores, is not correct. In fact, the plaintiff has
placed on record appropriate CA Certificate in support thereof. There is enough
material on record to show that the plaintiff has promoted its brand continuously
for the last many years and has been able to garner substantial goodwill and
reputation. From the material on record, it also appears that the mark
“GODFATHER” is exclusively associated with the plaintiff alone.
30. Even if it is assumed that the defendant had no mala fide in adopting the
word “GODFATHER” in its mark, the fact that the plaintiff has garnered
substantial goodwill and reputation for the last more than 40 years may cause the
ultimate consumer to associate the product of the defendant as that of the plaintiff.
There is a likelihood of the mark of the defendant affecting the distinctive
character or repute of the trademark “GODFATHER” of the plaintiff. It is possible
that the defendant may also obtain unfair advantage on account of the goodwill and
reputation already garnered over the last many years by the plaintiff.
31. Thus, on a cumulative and holistic appreciation of facts, prima facie, it
appears that the plaintiff is entitled to an ad-interim injunction restraining the
defendants from using the mark “GODFATHER” or other forms like
“GODFATHER’S” in respect of the product - ‘whisky’ manufactured by the
defendants during the pendency of the present suit.
32. Accordingly, the defendants, their successors, assigns, partners, directors,
and all others acting for and on its behalf are restrained from manufacturing,
bottling, marketing, selling, offering for sale, advertising, exporting, using the
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mark “GODFATHER” or “GODFATHER’S” or any other mark, label, carton,
packaging, trade dress or representation as part of their trademark in respect of the
product - whisky manufactured by the defendants during the pendency of the
present suit. The defendants are further directed to forthwith take down all the
listings, advertisements, posts and other content bearing the plaintiff’s trademark
GODFATHER or any deceptively similar mark in relation to whisky or other
alcoholic beverages from all websites, e‑commerce platforms, mobile applications,
social media platforms and other online or digital media under its control, and to
issue all necessary take‑down requests to third‑party platforms where such content
has been published.
33. The application is allowed in above terms and disposed of accordingly.
CS(COMM) 346/2026, I.A. 9898/2026, I.A. 9911/2026 & I.A. 10797/2026
34. List before the Court on 23.09.2026.
35. List before the Joint Registrar (Judicial) on 09.07.2026 for completion of
service and pleadings.
TUSHAR RAO GEDELA
(JUDGE)
JUNE 22, 2026
yrj/sumit/anj/rl
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