Delhi HC orders trademark dispute in Diageo’s favour

The Delhi High Court on Thursday ordered the removal of the trademark ‘Captain Blue’ from the Trade Marks Registry, in a case filed by Diageo Scotland Ltd., producer of the renowned ‘Captain Morgan’ rum, reported Live Law.

In its plea, Diageo argued that the mark ‘Captain Blue’, filed by one Prachi Verma under Class 33 (alcoholic beverages), was deceptively similar to its own ‘Captain’ family of marks, which include ‘Captain Morgan Gold’, ‘Captain Morgan White Rum’, and ‘Captain Morgan Dark Rum’.

The Assistant Registrar of Trade Marks had previously rejected Diageo’s opposition, stating the marks were distinct when compared as a whole. However, the court noted that Diageo is the prior user and registered proprietor of the ‘Captain’ mark, and that the term ‘Captain’ had become a strong source-identifier for Diageo’s products. The brand has been in India since 2006 and achieved approximately USD 6.48 million in sales in 2023.

The Court, according to Live Law, observed that the mere addition of the word ‘Blue’ for a similar category of goods was insufficient to avoid confusion and could mislead consumers into thinking the product was a new variant of Diageo’s offerings. It further noted that the respondent’s application was on a ‘proposed to be used’ basis, and no evidence of actual use or bona fide adoption was submitted.

Ruling in favour of Diageo under the provisions of the Trade Marks Act, the Court, thus, directed the Registrar of Trademarks to remove the ‘Captain Blue’ mark from its records.