Delhi High Court Cancels CAPTAIN BLUE Trademark: Major Win for Diageo’s CAPTAIN MORGAN Brand
Introduction: Landmark Trademark Dispute Involving Diageo and “CAPTAIN BLUE”
In a significant decision shaping the jurisprudence of trademark law in India, the Delhi High Court has set aside the registration of the mark “CAPTAIN BLUE” in Class 33, ruling in favor of the globally renowned spirits brand, Diageo Scotland Limited. The case marks a pivotal victory in protecting well-established trademarks from deceptive similarity and preserving consumer trust and brand integrity.
Background: Diageo’s Trademark Legacy
The appellant, Diageo Scotland Limited, is a subsidiary of Diageo PLC, one of the world’s largest producers of alcoholic beverages. The brand owns multiple globally acclaimed trademarks, most notably the “CAPTAIN MORGAN” rum brand. Diageo acquired this brand in 2001, and it has been commercially active in India since 2006.
The company owns several registrations under Class 33, covering alcoholic beverages, including:
- CAPTAIN MORGAN (Reg. No. 708544)
- CAPTAIN (Reg. No. 1485228)
- Additional sub-brands like CAPTAIN MORGAN GOLD, WHITE RUM, and DARK RUM
These trademarks have not only achieved extensive consumer recognition but have also led to substantial revenues—with the Indian market alone contributing around USD 6.48 million in 2023.
The Dispute: “CAPTAIN BLUE” Trademark Application
The controversy emerged when Prachi Verma (Respondent No. 1) filed Application No. 4398295 under Class 33 for the trademark “CAPTAIN BLUE”, on a “proposed to be used” basis. Following its publication, Diageo filed an opposition citing:
- Deceptive similarity with its existing marks
- Lack of bona fide intent
- Likelihood of consumer confusion
- Slavish imitation of its globally established trademarks
However, the Assistant Registrar of Trademarks dismissed Diageo’s opposition on 01.10.2024, reasoning that “CAPTAIN BLUE” was distinctive and that the word “CAPTAIN” was commonly used in other registered trademarks.
Appeal and Legal Arguments
Diageo’s Submissions
Represented by Mr. Piyush Kalra, Diageo contended that:
- The order was legally flawed and overlooked their prior statutory and common law rights.
- The use of “CAPTAIN” in “CAPTAIN BLUE” mirrored the dominant and source-identifying part of their trademark family.
- The suffix “BLUE” was insufficient to distinguish the mark.
- No evidence of use or intent was furnished by the respondent.
- The application lacked any filing under Rule 46 of the Trade Marks Rules, 2017.
Kalra emphasized that allowing “CAPTAIN BLUE” to remain registered would cause confusion, and that the brand could be mistakenly perceived as a variant of Diageo’s product line.
Respondents’ Position
- Respondent No. 1 was declared ex parte as no reply was filed and no representation made.
- Respondent No. 2 (Registrar) defended the original decision, arguing that Diageo failed to prove that “CAPTAIN BLUE” derived from its trademarks.
Notably, reliance was placed on case laws such as Vinita Gupta v. Amit Arora and Corn Products Refining Co. v. Shangrila Food Products Ltd., which ultimately supported the appellant’s case.
Court’s Analysis and Key Findings
The Delhi High Court, under Justice Saurabh Banerjee, made several critical observations:
- Diageo is the prior user and registered proprietor of the family of “CAPTAIN” marks.
- The mark “CAPTAIN BLUE” carries a remarkable sameness in concept and structure, likely to cause confusion.
- Absence of use, market presence, or commercial evidence from the respondent undermined any bona fide claim.
- The Registrar failed to evaluate over 80 third-party “CAPTAIN” applications that Diageo had either successfully opposed or settled confidentially.
- No evidence was provided to show that “CAPTAIN” is a generic term for alcoholic beverages in India.
The Court highlighted that mere suffixes such as “BLUE” do not remove the source-identifying confusion, especially when Diageo owns a suite of similarly structured marks under the same class and product type.
The Verdict: Order Set Aside and Trademark Cancelled
In a decisive conclusion, the Court ruled:
- The impugned order dated 01.10.2024 is hereby set aside.
- The trademark “CAPTAIN BLUE” (Application No. 4398295) is removed from the Register of Trade Marks.
- The Registrar of Trade Marks is directed to execute the removal forthwith.
Impact of the Judgment on Trademark Law
This case sets a strong precedent on several fronts:
- It reinforces the protection of well-known marks from deceptive variations.
- It discourages copycat applications with minor modifications.
- It upholds the principle that distinctiveness must be substantiated with evidence, particularly when a mark is applied on a “proposed to be used” basis.
Moreover, it emphasizes the weight of brand legacy and market presence in trademark disputes, especially when defending long-established, globally recognized trademarks.
Conclusion
The Delhi High Court’s ruling in Diageo Scotland Ltd. v. Prachi Verma & Anr. is a milestone judgment reaffirming the rights of brand owners against imitation and confusion in the market. It offers a strong deterrent to trademark squatters and ensures that trademarks with proven heritage, investment, and consumer loyalty continue to receive the highest degree of legal protection.
Frequently Asked Questions (FAQ)
1. Who is the appellant in the “CAPTAIN BLUE” trademark case?
The appellant is Diageo Scotland Limited, a subsidiary of Diageo PLC, known globally for its flagship brand CAPTAIN MORGAN and its family of “CAPTAIN” trademarks.
2. What was the core legal issue in this case?
The dispute centered on whether the trademark “CAPTAIN BLUE” was deceptively similar to Diageo’s registered trademarks, especially “CAPTAIN” and “CAPTAIN MORGAN,” both registered under Class 33 for alcoholic beverages.
3. What is Class 33 in trademark law?
Class 33 under the Nice Classification refers to trademarks for alcoholic beverages (except beers), including spirits, liquors, wines, and related products.
4. Who filed the trademark application for “CAPTAIN BLUE”?
Prachi Verma (Respondent No. 1) filed the application for registration of the trademark “CAPTAIN BLUE” on a proposed to be used basis.
5. Why did Diageo oppose the registration of “CAPTAIN BLUE”?
Diageo argued that “CAPTAIN BLUE” incorporated the dominant and source-identifying feature “CAPTAIN”, causing potential confusion with its existing family of trademarks and misleading consumers into believing both brands are related.
6. What was the Registrar’s initial decision?
The Assistant Registrar of Trade Marks initially dismissed Diageo’s opposition, ruling that “CAPTAIN BLUE” was distinctive and that many third-party registrations also used the term “CAPTAIN.”
7. On what grounds did Diageo challenge the Registrar’s decision?
Diageo challenged the decision on grounds of deceptive similarity, lack of bona fide adoption, absence of evidence of use by the respondent, and the dominant role of the word “CAPTAIN” in its established trademarks.
8. Did Respondent No. 1 defend their trademark application in Court?
No. Respondent No. 1 failed to file any reply or appear before the Court, resulting in an ex parte hearing against them.
9. What was the Delhi High Court’s key finding?
The Court found that adding “BLUE” to “CAPTAIN” did not sufficiently distinguish the mark from Diageo’s family of trademarks, making the mark likely to confuse consumers and dilute Diageo’s trademark rights.
10. Were any legal precedents cited in this case?
Yes, the Court referred to important precedents including Corn Products Refining Co. v. Shangrila Food Products Ltd. and Vinita Gupta v. Amit Arora, both emphasizing the principle of deceptive similarity in trademark law.
11. Did Diageo present any additional evidence regarding third-party trademarks?
Yes. Diageo presented data showing that over 80 third-party “CAPTAIN” applications had either been refused, abandoned, or successfully opposed by Diageo itself, reinforcing its exclusivity over the “CAPTAIN” mark.
12. What role did Rule 46 of the Trade Marks Rules, 2017 play in the decision?
The Court noted that Respondent No. 1 failed to submit any documentary evidence under Rule 46, indicating a lack of genuine commercial intent to use the trademark, which weighed heavily against them.
13. What was the final order of the Delhi High Court?
The Court set aside the Registrar’s order, directed removal of the “CAPTAIN BLUE” trademark from the Register, and affirmed Diageo’s exclusive rights over the “CAPTAIN” family of marks.
14. What is the significance of this judgment for trademark law in India?
The ruling reinforces the protection of well-established trademarks against minor variations and prohibits deceptive imitation, ensuring that brand identity and consumer trust are not compromised.
15. Can confidential settlements impact trademark disputes?
Yes. The Court noted Diageo’s confidential settlement with IFB Agro Industries but clarified that such settlements do not dilute Diageo’s trademark rights or serve as justification for third parties to register similar marks.
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