Neutral Citation: 2025:DHC:2612
Date of Order: April 16, 2025
Case Title: Diageo Scotland Limited Vs. Prachi Verma and Anr.
Case Number: C.A. (COMM.IPD-TM) 7/2025
Court: High Court of Delhi
Judge: Hon’ble Mr. Justice Saurabh Banerjee
In Diageo Scotland Limited v. Prachi Verma and Anr., C.A. (COMM.IPD-TM) 7/2025, the Delhi High Court adjudicated an appeal filed under Section 91 of the Trade Marks Act, 1999, challenging the order dated October 1, 2024, passed by the Assistant Registrar of Trade Marks. The impugned order had dismissed the appellant’s opposition to trademark application no. 4398295 for the mark “CAPTAIN BLUE” in Class 33. The appellant, Diageo Scotland Limited, part of the globally recognized Diageo Group and owner of the reputed “CAPTAIN MORGAN” family of marks, claimed proprietary rights in the registered trademarks “CAPTAIN” (reg. no. 1485228) and “CAPTAIN MORGAN” (reg. no. 708544), both registered in Class 33 for alcoholic beverages.
According to the appellant, “CAPTAIN MORGAN” has been used in India since 2006 and has gained immense recognition and commercial success, with reported sales in 2023 alone amounting to approximately USD 6.48 million. The appellant also owns multiple sub-brands under the “CAPTAIN” series, including “CAPTAIN MORGAN GOLD” and “CAPTAIN MORGAN WHITE RUM.” The respondent no. 1 filed a trademark application for “CAPTAIN BLUE” in Class 33 on a proposed-to-be-used basis. Upon its publication in the Trade Marks Journal on January 27, 2020, the appellant opposed it, citing deceptive similarity, likelihood of confusion, and absence of bona fide adoption. The Assistant Registrar dismissed the opposition, finding “CAPTAIN BLUE” distinctive when considered as a whole and citing the presence of unrelated third-party “CAPTAIN” marks.
In appeal, the appellant argued that the impugned order ignored both the statutory and common law rights vested in the family of “CAPTAIN” marks, and that the impugned mark was deceptively similar to its own, incorporating the dominant source-identifying element “CAPTAIN.” The addition of “BLUE,” it was contended, was insufficient to differentiate the mark. The appellant pointed out that the respondent no. 1 failed to produce any evidence of use, bona fide adoption, or commercial intent, and filed no documents under Rule 46 of the Trade Marks Rules, 2017. It was submitted that allowing the impugned mark to remain would cause consumer confusion, particularly as the mark might be mistaken for a variant of the appellant’s “CAPTAIN” products. The appellant further argued that permitting such registrations would compromise the distinctiveness of well-known marks and create a precedent for copycat filings.
Respondent no. 1 neither filed a reply nor appeared, and was accordingly proceeded against ex parte. Respondent no. 2 supported the impugned order, contending that “CAPTAIN BLUE” was not derived from the appellant’s marks, and that the parties' marks were dissimilar. Citing Vinita Gupta v. Amit Arora, 2022 SCC OnLine Del 3249, and Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142, respondent no. 2 maintained that no semantic similarity or likelihood of confusion existed. The appellant responded that third-party “CAPTAIN” marks referred to in oral arguments were either not part of the original proceedings or had been abandoned, opposed, or withdrawn. In the case of one such user, IFB Agro Industries, the appellant had entered a confidential settlement and had deliberately refrained from opposition. The appellant relied on Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, and reiterated that even slight conceptual similarities in identical goods can cause confusion, particularly where the prior mark is well-established.
The Court undertook a comprehensive analysis. It noted that the appellant was the prior user and registered proprietor of the “CAPTAIN” and “CAPTAIN MORGAN” marks, with continuous use and significant goodwill both internationally and domestically. The Court held that the use of “CAPTAIN” in “CAPTAIN BLUE” constituted a clear adoption of the appellant’s dominant mark. The addition of the word “BLUE” was insufficient to dispel confusion, especially when the goods—alcoholic beverages—were identical and marketed in the same class. The likelihood of “CAPTAIN BLUE” being misconstrued as a variant or extension of the appellant’s “CAPTAIN” product line was high. The Court was particularly concerned by the complete absence of any evidence of actual use or commercial intention by the respondent, especially given the proposed-to-be-used basis of the application.
The Court noted that the opposition materials submitted by the appellant, including a detailed list of over 80 “CAPTAIN” marks which had been withdrawn, refused, abandoned or opposed by the appellant, were disregarded in the impugned order. There was no indication that the word “CAPTAIN” was in common use for alcoholic beverages in India. The Court found that the Assistant Registrar failed to consider these critical elements. The argument regarding a prior rejection of a similar opposition by the appellant in an unrelated matter was not found sufficient to preclude the appellant from pursuing this appeal, especially as that case had not been contested.
The Court reiterated the principles laid down in Corn Products Refining Co. and Vinita Gupta, affirming that the impugned mark was indeed likely to create confusion and did not deserve registration. Emphasizing the statutory protections under Section 28 of the Trade Marks Act for registered proprietors, the Court concluded that the impugned mark should have been refused registration under Section 11. Accordingly, the Court allowed the appeal, set aside the order dated October 1, 2024, and directed that the impugned trademark application no. 4398295 for “CAPTAIN BLUE” be removed from the Register of Trade Marks.
