{"id":150052,"date":"2026-06-25T08:00:56","date_gmt":"2026-06-25T02:30:56","guid":{"rendered":"https:\/\/www.bananaip.com\/intellepedia\/?p=150052"},"modified":"2026-06-24T22:55:48","modified_gmt":"2026-06-24T17:25:48","slug":"godfather-trademark-beer-whisky-allied-cognate-goods-delhi-high-court","status":"publish","type":"post","link":"https:\/\/www.bananaip.com\/intellepedia\/godfather-trademark-beer-whisky-allied-cognate-goods-delhi-high-court\/","title":{"rendered":"Don\u2019t Mess with the Don: Delhi HC Protects the GODFATHER Trademark"},"content":{"rendered":"

Background<\/strong><\/h2>\n

Four decades of building a brand can be undone in a season if courts do not intervene. The Delhi High Court was asked to decide whether a landmark alcoholic beverage trademark could protect its owner against a whisky brand that had borrowed the same iconic name, attaching a celebrity\u2019s identity to it for good measure.<\/p>\n

Devans Modern Breweries Limited (Devans), established in 1961, is one of India\u2019s leading manufacturers of malt, spirit, and beer. The company adopted the GODFATHER trademark in 1984 for beer in Class-32 under the Trade Marks Act, 1999 (\u201cTrade Marks Act\u201d), and subsequently secured registrations for the same mark in Class-33 covering alcoholic beverages other than beer, including rum and whisky, as far back as 2005. The GODFATHER trademark is also registered in several international jurisdictions. By the financial year 2024\u201325, Devans was recording beer sales of approximately Rs.746 crores under the GODFATHER name, a figure supported by a Chartered Accountant certificate. The mark had also been used for rum and whisky sales, with invoices on record for the period from 2005 to 2013 and a total IMFL turnover of approximately Rs.18 crores for the years 2006 to 2026.<\/p>\n

Cartel Bros Private Limited (Cartel Bros), incorporated only in 2022, filed trademark applications in January and February 2026 on a \u201cproposed to be used\u201d basis for composite marks incorporating the word \u201cGODFATHER.\u201d The original mark was \u201cTHE GLENWALK BLENDED SCOTCH WHISKY,\u201d but the applications included a revised version reading \u201cTHE GLENWALK GODFATHER\u2019S BY SANJAY DUTT.\u201d Separately, Cartel Bros applied to register the standalone word mark \u201cTHE GODFATHER\u201d in Class-33. Devans discovered the applications through the Trade Marks e-register and also came across social media posts by Cartel Bros announcing the imminent launch of a whisky product under the GODFATHER name. Devans filed a suit for trademark infringement and passing off before the Delhi High Court and simultaneously sought an interim injunction. The court decided the interim application on June 22, 2026.<\/p>\n

Issues Before the Court<\/h2>\n
    \n
  • \n
      \n
    • Whether non-use of the GODFATHER trademark in Class-33 since 2013 extinguishes a registered proprietor\u2019s right to enforce Section 29 of the Trade Marks Act against an infringer<\/li>\n
    • Whether beer falling in Class-32 and whisky falling in Class-33 constitute allied and cognate goods for the purpose of trademark infringement<\/li>\n
    • Whether the anti-dissection rule bars a finding of infringement when the plaintiff\u2019s registered word mark appears as one element of the defendant\u2019s composite mark<\/li>\n
    • Whether the overall rival marks create a likelihood of confusion and whether an interim injunction is warranted<\/li>\n<\/ul>\n<\/li>\n<\/ul>\n

      Devans\u2019 Arguments<\/h2>\n
        \n
      • \n
          \n
        • The GODFATHER trademark is an arbitrary mark with no inherent connection to alcoholic beverages, entitling it to a higher level of protection under Sections 29(1) and (2) of the Trade Marks Act.<\/li>\n
        • Devans holds valid registrations in both Class-32 (since the 1980s) and Class-33 (since 2005); invoices and a CA certificate establish actual sales of rum and whisky under the GODFATHER trademark between 2005 and 2013.<\/li>\n
        • Annual beer sales of Rs.746 crores in FY 2024\u201325, substantial advertising expenditure, and international registrations in New Zealand, Canada, Malaysia, Singapore, and the UAE establish the GODFATHER trademark as a well-known mark with pan-India reputation.<\/li>\n
        • Beer and whisky are allied and cognate goods: both are alcoholic beverages sold through common trade channels including bars, restaurants, and retail liquor outlets, governed by the same state excise regulatory framework, and purchased by overlapping consumer segments.<\/li>\n
        • The article \u201cTHE\u201d before \u201cGODFATHER\u201d creates no meaningful distinction; the dominant and prominent part of Cartel Bros\u2019 composite mark is \u201cGODFATHER,\u201d which is identical to Devans\u2019 registered word mark.<\/li>\n
        • Section 29(4) of the Trade Marks Act applies independently because use of a similar mark by a third party takes unfair advantage of, and is detrimental to, the distinctive character and repute of the GODFATHER trademark.<\/li>\n
        • Cartel Bros was incorporated in 2022 and adopted the GODFATHER name in 2026 with full knowledge of Devans\u2019 prior registrations, as demonstrated by its own reply to the Trade Marks Registry\u2019s examination report.<\/li>\n<\/ul>\n<\/li>\n<\/ul>\n

          Cartel Bros\u2019 Arguments<\/h2>\n
            \n
          • \n
              \n
            • The defendant\u2019s mark is composite and must be assessed as a whole under the anti-dissection rule; the source identifier is the celebrity personality \u201cSanjay Dutt,\u201d not the word \u201cGODFATHER.\u201d<\/li>\n
            • GODFATHER is a common dictionary word, and Devans cannot claim exclusivity unless it establishes secondary significance<\/strong> for that word specifically in relation to whisky; no such evidence was placed on record.<\/li>\n
            • Devans has not held an excise license or sold whisky since at least 2013; the invoices produced contain irregularities and the total Class-33 turnover over 20 years amounts to only Rs.18 crores, far less than Cartel Bros\u2019 Rs.212 crores in turnover over three years.<\/li>\n
            • Beer and whisky are fundamentally different products: the price gap (Rs.100 versus Rs.1,750 per unit), vastly different alcohol content (8% versus 48%), distinct storage requirements, different consumption methods, and an affluent, discerning whisky consumer base rule out any likelihood of confusion.<\/li>\n
            • The Supreme Court\u2019s ruling in Pernod Ricard India Private Limited v. Karamveer Singh Chhabra<\/em>, 2025 SCC OnLine SC 1701, cautions that holistic comparison of marks must not be displaced by a dominant-feature analysis; the revised mark, read as a whole, is visually, phonetically, and structurally dissimilar from \u201cGODFATHER.\u201d<\/li>\n
            • The primary brand \u201cTHE GLENWALK,\u201d a coined word associated with Scotch whisky from Scotland, is the genuine source identifier, and the defendant is willing to withdraw the standalone \u201cTHE GODFATHER\u201d word mark application if permitted to use the revised composite mark.<\/li>\n<\/ul>\n<\/li>\n<\/ul>\n

              Court\u2019s Analysis and Observations<\/h2>\n

              Non-Use Does Not Extinguish Statutory Enforcement Rights<\/h3>\n

              The court observed that Sections 18 and 28 of the Trade Marks Act confer upon a registered proprietor exclusive rights to use and enforce a trademark by virtue of registration alone. The court noted that neither provision conditions those rights on actual use of the mark in trade. Non-use of a registered trademark does not, by itself, disentitle the proprietor from suing a third party for infringement; that right is lost only if the mark is validly rectified or cancelled in accordance with law. The mere filing of a rectification petition, without its adjudication, cannot operate as a presumption against the validity of a registered mark.<\/p>\n

              Turning to the factual record, the court found that Devans had placed invoices and a CA certificate on record indicating sales of rum and whisky under the GODFATHER trademark between 2007 and 2013. The court stated that the quality and weight of those documents were matters for trial; at the interim stage, the positive assertion of use backed by documentary material was sufficient to establish a prima facie case. Accordingly, the GODFATHER trademark registrations in both Class-32 and Class-33 were held to be valid and fully enforceable pending the rectification proceedings.<\/p>\n

              Beer and Whisky as Allied and Cognate Goods<\/h3>\n

              The court observed that the test for determining whether goods are allied and cognate<\/strong> is the nature, kind, and intended use of the products, not the perception or sophistication of the consumer. The court noted that beer and whisky are both intoxicating alcoholic beverages consumed across segments of society for enjoyment and relaxation. Trade channels and retail distribution are common in India: both products are sold in the same bars, pubs, restaurants, and retail liquor stores. Both products are also governed by the same excise regulatory framework across states. The court found that price differences, differing alcohol content, and the general profile of whisky consumers are not metrics for determining whether goods are allied. Applying the commercial reality test, the court held that beer and whisky were prima facie allied and cognate goods, distinguishing the UK Caledonian ruling relied on by Cartel Bros on the ground that, unlike the opponent in that case, Devans held a registration and had demonstrated use in Class-33.<\/p>\n

              The Anti-Dissection Rule Does Not Protect a Dominant Infringing Element<\/h3>\n

              The court noted that the anti-dissection rule is a principle of trademark comparison designed to prevent a plaintiff from isolating one element of a rival composite mark and ignoring the remainder when assessing deceptive similarity. However, the court observed that this principle does not apply where the element the plaintiff objects to is itself the essential, dominant, and prominent feature of the composite mark.<\/p>\n

              Examining Cartel Bros\u2019 original mark, the court found that \u201cGODFATHER\u201d was clearly the prominent part, and the background element \u201cTHE GLENWALK\u201d receded visually. In the proposed revised mark \u201cTHE GLENWALK GODFATHER\u2019S BY SANJAY DUTT,\u201d the court observed that while the font size of \u201cTHE GLENWALK\u201d had been increased and that of \u201cGODFATHER\u2019S\u201d reduced, the word \u201cGODFATHER\u2019S\u201d still appeared bold and prominent when perceived by a general consumer with average intelligence and imperfect recollection. The court held that because the plaintiff\u2019s GODFATHER trademark is a registered word mark, its essential characteristics survive even within a composite rival mark, and the anti-dissection rule is no answer to infringement in those circumstances. The court further found that the defendant\u2019s awareness of the plaintiff\u2019s registrations in Class-33, disclosed in Cartel Bros\u2019 own reply to the Trade Marks Registry\u2019s examination objections, cast serious doubt on the bona fides of the adoption.<\/p>\n

              The court applied the holistic comparison framework laid down by the Supreme Court in Pernod Ricard India Private Limited v. Karamveer Singh Chhabra<\/em>, 2025 SCC OnLine SC 1701, which cautions that dominant-feature analysis is only an analytical aid and that the ultimate test is whether the mark as a whole creates deceptive similarity. Undertaking that holistic comparison, the court reached the same conclusion: \u201cGODFATHER\u201d remained the dominant and essential feature of the composite mark, making it deceptively similar to Devans\u2019 registered word mark both visually and phonetically.<\/p>\n

              Section 29(4), Passing Off, and the Grant of Injunction<\/h3>\n

              The court stated that the ingredients of Section 29(1) and (2) of the Trade Marks Act were met because the rival marks were identical, the goods were allied and cognate, and the registration in Class-33 was valid. Section 29(4) was also independently attracted, the court found, because the GODFATHER trademark carried substantial goodwill built over forty years, and the use of an identical or similar mark by a newcomer was likely to cause an average consumer to associate Cartel Bros\u2019 whisky with Devans, thereby taking unfair advantage of and diluting the distinctive character and repute of the GODFATHER trademark. On passing off, the court held that Devans\u2019 goodwill in the mark was established, misrepresentation through the use of an identical name was apparent, and the risk of consumer diversion was real. The balance of convenience favoured Devans, as trademark dilution and erosion of distinctiveness are forms of harm that damages may not adequately compensate.<\/p>\n

              Findings<\/strong><\/h2>\n

              In view of the observations and the arguments presented by both the parties, the Delhi High Court held that:<\/p>\n