Delhi High Court Rules In Favour Of Captain Morgan, Orders Removal Of Captain Blue Trademark

The Delhi High Court has directed for the removal of trademark of Captain Blue from the Trade Marks Registry in challenge put by Captain Morgan, the product of British alcohol conglomerate Diageo.

The Court was considering and Appeal filed by Diageo Scotland Limited against an order passed by Assistant Registrar of Trade Marks, whereby its opposition against the registration of the impugned mark “CAPTAIN BLUE” was dismissed.

The single bench of Justice Saurabh Banerjee observed, ".....since it is established that the appellant being a prior user, a registered proprietor of the family of “CAPTAIN” marks and also a ‘person aggrieved’, is entitled to invoke the appellate jurisdiction of this Court under Section 91 of the Act for seeking rectification of the impugned order.....Resultantly, the registration of the impugned application no. 4398295 for the registration of the mark “CAPTAIN BLUE” in Class 33 in the name of the respondent no.1 is liable to be taken off from the Register of Trade Marks."

The Appellant was represented by Advocate Peeyoosh Kalra while the Respondent was represented by CGSC Nidhi Raman.

Facts of the Case

As per Appellant, the “CAPTAIN” brand has been continuously and extensively used in India since 2006 and has obtained registration for the trademark “CAPTAIN” and “CAPTAIN MORGAN”, both in Class 33. Over the years, the brand has garnered formidable consumer recognition and loyalty, generating substantial revenues. For the year 2023 alone, the “CAPTAIN MORGAN” brand reported sales to the tune of approximately USD 6.48 million in India.

In contrast, the Respondent No.1 filed the impugned application for the mark “CAPTAIN BLUE” also in Class 33 for alcoholic beverages, on a “proposed to be used” basis. After its publication in the Trade Marks Journal on January 27, 2020, the Appellant filed Opposition contesting the registration on the grounds of deceptive similarity, lack of bona fide adoption and likelihood of causing confusion among the public. The said Opposition of the Appellant was rejected by the Respondent No.2 holding that the said impugned mark “CAPTAIN BLUE”, when compared as a whole, was found distinctive as also on the basis of unrelated third-party registrations containing the word “CAPTAIN”. Aggrieved thereby, the Appellant prayed for setting aside of the impugned order.

Counsel for the Appellant submitted that the impugned order suffers from manifest legal infirmities, as it overlooks the prior statutory and common law rights of the appellant vested in its family of “CAPTAIN” marks, particularly the globally renowned and extensively used mark “CAPTAIN MORGAN”. Moreover, the impugned mark “CAPTAIN BLUE”, forming the subject matter of application is deceptively similar to the appellant’s prior registered marks and in fact, constitutes a slavish imitation thereof. He submitted that the Respondent No.2 failed to appreciate that the Appellant is the prior and registered proprietor of the trademark “CAPTAIN” and “CAPTAIN MORGAN” and also holds multiple registrations qua the said family of marks. 

He further submitted that the impugned mark is not merely similar but wholly incorporates the dominant and source-identifying component of the appellant’s marks, namely “CAPTAIN” and the addition of the suffix “BLUE” does not distinguish the said mark with that of the appellant. 

As per the Counsel, if the impugned order is allowed to stand, it would not only distort the settled legal precedent but would also open the floodgates for copycat applications in a manner that would irreparably damage the distinctiveness and exclusivity of reputed marks.

Reasoning By Court

The Court at the outset stated that it is an admitted fact that the Appellant is not only the prior adopter but is also the registered proprietor of the trademark “CAPTAIN” as also of the trademark “CAPTAIN MORGAN” and also holds similar multiple registrations. It further stated that the Appellant has also been continuously using the same and has acquired immense goodwill therein, both internationally and in India.

"In such a scenario, particularly whence the appellant is already the owner of the family of “CAPTAIN” marks, including “CAPTAIN MORGAN GOLD, “CAPTAIN MORGAN WHITE”, there is every likelihood of the impugned mark “CAPTAIN BLUE” of the respondent no.1 to be perceived as yet another variant emanating from the appellant and be falsely associated with the mark(s) of the appellant," the Court observed.

The Court was of the view that since the impugned mark “CAPTAIN BLUE” of the Respondent no.1 has the registered trademark “CAPTAIN”, a dominant and source-identifying feature of the family of “CAPTAIN” marks belonging to the appellant within it, merely adding the suffix “BLUE” thereto, more so, when the Appellant has other mark(s) with the same “CAPTAIN” in the very same Class 33 for the very identically similar goods namely alcoholic beverages is not sufficient evidence for it to be distinct as there is every likelihood of associating of the same with that of the family of “CAPTAIN” marks belonging to the Appellant as also causing confusion amongst the members of the trade as well as in the minds of the general public.

"...in view of what has been held in Corn Products Refining Co. (supra) and Vinita Gupta (supra), the respondent no.1 is not entitled for registration of the impugned mark “CAPTAIN BLUE” and the impugned order calls for it to be set aside," the Court concluded.

Cause Title: Diageo Scotland Limited vs. Prachi Verma & Anr. 2025:DHC:2612

Appearances:

Appellant- Advocate Peeyoosh Kalra, Advocate V. Mohini, Advocate Aarti Aggarwal, Advocate Yashwant Singh Bagel

Respondent- CGSC Nidhi Raman, Advocate Debashish Mishra, Advocate Arnav Mittal

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