{"id":129480,"date":"2025-05-14T17:43:36","date_gmt":"2025-05-14T12:13:36","guid":{"rendered":"https:\/\/www.bananaip.com\/intellepedia\/?p=129480"},"modified":"2025-05-14T17:43:36","modified_gmt":"2025-05-14T12:13:36","slug":"captain-morgan-trademark-dispute","status":"publish","type":"post","link":"https:\/\/www.bananaip.com\/intellepedia\/captain-morgan-trademark-dispute\/","title":{"rendered":"Captain Morgan Prevails Over Captain Blue in Trade Mark Dispute"},"content":{"rendered":"

The appellant, Diageo Scotland Limited, filed an appeal under Section 91 of the Trade Marks Act, 1999, challenging the order dated 1 October 2024 passed by the Assistant Registrar of Trade Marks. Diageo, a part of the globally renowned Diageo Group, has owned and used the “CAPTAIN” and “CAPTAIN MORGAN” family of marks extensively in India since 2006, particularly for alcoholic beverages under Class 33. Prachi Verma, the respondent, had applied to register the trademark “CAPTAIN BLUE” in the same class, on a “proposed to be used” basis. Diageo opposed the application, citing deceptive similarity, lack of bona fide adoption, and the likelihood of confusion among the public. However, the opposition was dismissed by the Assistant Registrar, leading to the present appeal.<\/span>\u00a0<\/span><\/p>\n

The issues before the Court were:<\/span>\u00a0<\/span><\/p>\n

    \n
  1. \n
      \n
    1. Whether “CAPTAIN BLUE” was deceptively similar to Diageo\u2019s “CAPTAIN” marks.<\/span>\u00a0<\/span><\/li>\n
    2. Whether the Assistant Registrar ignored Diageo\u2019s prior statutory and common law rights and,<\/span>\u00a0<\/span><\/li>\n
    3. Whether the mere addition of the word “BLUE” sufficed to differentiate Prachi\u2019s mark from Diageo\u2019s established marks.<\/span>\u00a0<\/span><\/li>\n<\/ol>\n<\/li>\n<\/ol>\n

      The Court examined the matter under Section 11 and Section 28 of the Trade Marks Act, 1999, along with judicial precedents including <\/span>Vinita Gupta v. Amit Arora<\/span><\/i><\/b> and<\/span> Corn Products Refining Co. v. Shangrila Food Products Ltd.<\/span><\/i><\/b> The Court noted that Diageo was the prior adopter and continuous user of the “CAPTAIN” family of marks, which had acquired immense goodwill and consumer recognition. The dominant feature of Diageo\u2019s mark was “CAPTAIN”, and the addition of the word “BLUE” by Prachi did not sufficiently distinguish the applied mark. Furthermore, Prachi\u2019s application was filed without any evidence of bona fide use, commercial intent, or rationale for adoption. This absence of evidence and the likelihood of public confusion were not adequately considered by the Assistant Registrar.<\/span>\u00a0<\/span><\/p>\n

      During the proceedings, Prachi neither filed any reply nor was being represented. The Court heard the Assistant Registrar\u2019s submissions and observed that its reliance on third-party “CAPTAIN” marks was misplaced, as those marks were either withdrawn, refused, abandoned, or settled confidentially with Diageo. The existence of isolated third-party registrations could not dilute Diageo\u2019s statutory rights in its “CAPTAIN” family of marks.<\/span>\u00a0<\/span><\/p>\n

      Applying the principles from the <\/span>Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd.<\/i><\/strong> and <\/span>Corn Products Refining Co.<\/i><\/strong> cases, the Court held that minor variations or additions do not remove the possibility of confusion, especially when the goods are identical and the prior mark is well-established.<\/span>\u00a0<\/span><\/p>\n

      Ultimately, the Court allowed the appeal, setting aside the impugned order of the Assistant Registrar. It directed the Registrar of Trade Marks to remove the application for the mark “CAPTAIN BLUE” from the Register of Trade Marks forthwith. This decision reinforces the exclusive rights of proprietors over the dominant part of their well-established trademarks and emphasizes the importance of protecting consumers from confusion in the market.<\/span>\u00a0<\/span><\/p>\n

      Citation: Diageo Scotland Limited vs Prachi Verma & Anr., In the High Court of Delhi, C.A. (COMM.IPD-TM) 7\/2025, on 16th April 2025. Available at: <\/span><\/i><\/b>https:\/\/indiankanoon.org\/doc\/130714924\/<\/span><\/i><\/b><\/a> \u00a0<\/span><\/p>\n

      Article Author: T.K. Tushar<\/p>\n

      Article and Accessibility Review: Benita Alphonsa Basil<\/p>\n","protected":false},"excerpt":{"rendered":"

      The Delhi High Court has ruled in favour of Diageo\u2019s \u201cCaptain Morgan\u201d trademark, rejecting the registration of \u201cCaptain Blue\u201d due to deceptive similarity and absence of bona fide use. The decision reinforces the importance of prior use and consumer recognition in trademark law.<\/p>\n","protected":false},"author":2,"featured_media":129634,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"iawp_total_views":41,"footnotes":""},"categories":[6,5495,11],"tags":[6739,6737,486,6738,5,3004,101],"class_list":["post-129480","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-intellectual-property","category-case-reviews","category-trademarks","tag-captain-blue","tag-captain-morgan","tag-delhi-high-court","tag-diageo","tag-intellectual-property","tag-opposition","tag-trademark-law"],"_links":{"self":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/129480","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/comments?post=129480"}],"version-history":[{"count":5,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/129480\/revisions"}],"predecessor-version":[{"id":129674,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/129480\/revisions\/129674"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/media\/129634"}],"wp:attachment":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/media?parent=129480"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/categories?post=129480"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/tags?post=129480"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}