Beer and Whisky are Allied and Cognate Goods; Mere Non-Use Does Not Terminate Exclusive Proprietary Rights.

The Plaintiff, established in 1961, is the registered proprietor of the trademark "GODFATHER" for beer (Class 32) since 1984 and for other alcoholic beverages including whisky and rum (Class 33) since 2005.

The Plaintiff discovered a Facebook announcement by the Defendants regarding the imminent launch of whisky under the mark "GODFATHER" and found several trademark applications filed by the Defendants for the same mark in Class 33 on a "proposed to be used" basis.

The Plaintiff filed for an ad-interim injunction alleging infringement and passing off.

The Defendants contended that they intended to use a composite mark "THE GLENWALK GODFATHER’S BY SANJAY DUTT," arguing the products (beer vs. scotch) are not allied and that the Plaintiff had not used the mark for whisky since 2013.

The court applied Section 28 of the Trade Marks Act, 1999, which grants exclusive rights to a registered proprietor to use a mark and obtain relief for infringement.

It relied on Gujarat Bottling Co. Ltd. v. Coca Cola Co. to establish that statutory rights enable a proprietor to sue regardless of whether the mark is actively used.

Regarding "allied and cognate goods," the court applied the "commercial reality test" from FDC Limited v. Docsuggest Healthcare Services and Radico Khaitan Ltd. v. Devans Modern Breweries Ltd., focusing on the nature, trade channels, and intended use of products.

It further examined Section 29(4) regarding dilution and unfair advantage and the "Dominant Feature Test" as elucidated in Pernod Ricard India Pvt. Ltd. v. Karamveer Singh Chhabra.

The court found that the Plaintiff’s registrations in Classes 32 and 33 remain valid until rectified, and mere filing of a rectification petition does not diminish these rights.

While the Defendants argued beer and whisky are distinct due to price and alcohol content, the court ruled they are allied and cognate because they share trade channels (retail stores, bars), are governed by the same excise regime, and serve the same purpose of inebriation.

Applying the Dominant Feature Test, the court determined that "GODFATHER" remains the essential and prominent feature of the Defendants' composite mark, catching the eye of the consumer despite the addition of "The Glenwalk" or "Sanjay Dutt".

The court observed that the Defendants' attempt to add the prefix "THE" to the mark in their reply to the Registry’s objections evidenced knowledge of the Plaintiff’s prior mark and lack of bona fides.

The court restrained the Defendants from manufacturing, marketing, or selling whisky under the mark "GODFATHER" or "GODFATHER’S" or any deceptively similar mark during the pendency of the suit and directed to take down all online listings and advertisements bearing the infringing mark.

The application (I.A. 8777/2026) was allowed.