Beer & Whisky Are Cognate Goods; 'GODFATHER' Remains Dominant Feature In Composite Mark: Delhi High Court Restrains Cartel Bros Whisky Use
The Court further held that non-use of registered mark does not extinguish right to sue for infringement, and addition of celebrity name 'Sanjay Dutt' as subscript does not cure deceptive similarity.
The Delhi High Court has granted an ad-interim injunction restraining Cartel Bros Private Limited from using the mark GODFATHER or GODFATHER'S in respect of whisky, holding that the word "GODFATHER" of Devans Modern Breweries Limited constitutes the dominant and prominent feature of the defendant's composite mark. Further held that the anti-dissection rule cannot be invoked to shield a composite mark when the essential element of the plaintiff's registered word mark is visibly retained and catches the eye of a general consumer.
The Court further held that even if a registered proprietor has not actively used its mark in relation to goods under a particular class, non-use without valid rectification does not extinguish the statutory right to sue for infringement conferred under Section 28 of the Trade Marks Act, 1999. The mere filing of a rectification petition by the defendant, the Court observed, creates no presumption against the validity of a registered mark until such petition is tested and allowed in accordance with law.
Justice Tushar Rao Gedela observed, “…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 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”.
“…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 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 Bench noted.
Senior Advocate J. Sai Deepak appeared for the plaintiff and Senior Advocate Amit Sibal appeared for the defendant.
Devans Modern Breweries Limited, founded in 1961 and the manufacturer of beer under the mark "GODFATHER" since 1984, holds registrations in Class 32 since the 1980s and in Class 33 since 2005. Its beer recorded sales of Rs. 746 crores in FY 2024-25.
Cartel Bros, incorporated in 2022, filed trademark applications in January and February 2026 on a proposed-to-be-used basis for a whisky product featuring the word GODFATHER prominently, later proposing a revised mark styled THE GLENWALK GODFATHER'S BY SANJAY DUTT. The plaintiff filed suit for infringement and passing off and sought ad-interim relief.
The Court held that beer and whisky are allied and cognate goods, the determining metric being the kind, nature and intended use of the goods rather than price variation or consumer profile. It rejected the Caledonian judgment relied upon by the defendant as distinguishable on the ground that the plaintiff in the present case holds registration in Class 33 and has placed on record invoices demonstrating actual sales of rum and whisky, unlike the opponent in that case. The Court found the defendant's bona fides in adoption doubtful given its own reply to the Trade Mark Registry's examination report acknowledged the plaintiff's mark in Class 33.
“…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 though in the same retail stores, has no nexus with the products themselves...”, the Bench noted.
“…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”, the Bench further noted.
The defendants were restrained from manufacturing, selling, advertising or using the mark "GODFATHER" or "GODFATHER'S" in any form in relation to whisky and were directed to immediately take down all listings, posts and digital content bearing the mark across all platforms.
Cause Title: Devans Modern Breweries Limited v. Cartel Bros Private Limited and Another (Neutral Citation: 2026:DHC:5156)
Appearances:
Plaintiff: J. Sai Deepak, Senior Advocate, with Afzsal B. Khan, Suhrita Majumdar, Manosij Mukherjee, Sharad Besoya, Manya Jain, Purnima Vashishtha and Bal Krishan Singh, Advocates.
Defendants: Amit Sibal, Senior Advocate, with Gaurav Bahl, Ajit N. Makhijani, Rajat Jain, Amrita Dubey and Chayanika Das, Prateek Goyal, Gaurav Kathuria, Advocates.