Introduction

Trademark disputes in the alcoholic beverage industry frequently raise complex questions regarding brand identity, consumer perception, reputation, and the extent of protection available to registered trademarks. The decision in Devans Modern Breweries Limited v. Cartel Bros Private Limited & Anr. is significant because it addresses whether a long-established trademark used primarily for beer can prevent another business from using the same mark for whisky.

The judgement examines the scope of trademark protection under the Trade Marks Act, 1999, particularly where competing products fall in different trademark classes but belong to the broader category of alcoholic beverages. The court also considered important principles relating to non-use of trademarks, allied and cognate goods, likelihood of confusion, dilution of reputation, and the anti-dissection rule applicable to composite marks.

The ruling is particularly relevant for trademark owners, businesses launching new brands, intellectual property practitioners, and companies operating in industries where brand reputation constitutes a valuable commercial asset.

Why This Judgment Is Important

• Clarifies trademark protection across different classes of alcoholic beverages.
• Examines the doctrine of allied and cognate goods.
• Discusses the effect of alleged non-use of a registered trademark.
• Explains the anti-dissection rule for composite trademarks.
• Addresses likelihood of consumer confusion and passing off.
• Highlights protection of goodwill and brand reputation.

Factual and Procedural Background

Devans Modern Breweries Limited claimed to be one of India’s leading manufacturers of alcoholic beverages and asserted long-standing use of the trademark “GODFATHER” since 1984 in relation to beer. The company possessed registrations for the mark in Class 32 for beer and also held registrations in Class 33 covering alcoholic beverages other than beer, including whisky and rum. The plaintiff contended that over several decades of commercial use, advertising, sales promotion, and market presence, the mark “GODFATHER” had acquired substantial goodwill and reputation.

According to the plaintiff, it discovered social media announcements indicating that Cartel Bros Private Limited intended to launch whisky products bearing the mark “GODFATHER”. Further investigation revealed that the defendants had filed trademark applications in Class 33 incorporating the word “GODFATHER”, including applications filed on a proposed-to-be-used basis in early 2026.

The plaintiff instituted a commercial suit for trademark infringement and passing off and simultaneously sought an interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908.

The defendants resisted the application, contending that they proposed to market whisky under a composite mark that prominently featured “THE GLENWALK” and “BY SANJAY DUTT”, with “GODFATHER’S” appearing only as one component of the overall branding. The defendants also argued that the plaintiff had not substantially used the “GODFATHER” mark in relation to whisky for several years and therefore should not be entitled to exclusive protection in that segment.

Key Facts at a Glance

Dispute Before the Court

The court was required to determine whether the plaintiff’s trademark registrations remained enforceable despite allegations of limited use in relation to whisky.

The Court also had to decide whether beer and whisky could be regarded as allied and cognate goods even though they are classified separately under trademark law.

Another important question was whether the defendants’ proposed branding, including “THE GLENWALK GODFATHER’S BY SANJAY DUTT”, was sufficiently different from the plaintiff’s mark to avoid infringement and passing off.

The parties also disputed whether the anti-dissection rule prevented the court from focusing on the word “GODFATHER” in isolation and whether consumers were likely to associate the defendants’ whisky with the plaintiff’s well-known alcoholic beverage brand.

Legal Issues for Determination

• Whether the plaintiff’s trademark registrations remained enforceable despite allegations of limited use for whisky.
• Whether beer and whisky are allied and cognate goods under trademark law.
• Whether the defendants’ proposed composite mark infringed the plaintiff’s registered trademark.
• Whether the anti-dissection rule prevented examination of the dominant element “GODFATHER”.
• Whether the defendants’ branding was likely to cause consumer confusion or passing off.
• Whether the plaintiff’s goodwill and reputation deserved protection across alcoholic beverage products.

Reasoning and Analysis of the Court

The Court began by examining the statutory framework governing registered trademarks. It referred to Sections 18, 28 and 29 of the Trade Marks Act, 1999, and emphasised that registration itself grants enforceable proprietary rights. The Court observed that a registered proprietor can sue for infringement notwithstanding allegations of non-use unless the registration is first removed or rectified in accordance with law. The Court relied upon Gujarat Bottling Co. Ltd v. Coca Cola Co., (1995) 5 SCC 545, which recognised that statutory trademark rights are not dependent upon continuous use.

Registered Trademark Rights and Alleged Non-Use

The defendants had argued that the plaintiff had not meaningfully used the “GODFATHER” mark for whisky after 2013. The court, however, noted that the plaintiff had produced invoices and supporting material indicating use of the mark for whisky and rum. While the evidentiary value of those documents would ultimately be tested at trial, the Court found them sufficient at the interim stage to support a prima facie case of use.

Beer and Whisky as Allied and Cognate Goods

A major issue concerned whether beer and whisky were allied and cognate goods. The Court observed that both products are alcoholic beverages, are sold through common trade channels, are available at the same retail outlets, and are regulated under similar excise frameworks. Although differences existed in price, alcohol content, storage requirements, and consumer preferences, those distinctions were not decisive. The Court held that the nature, purpose, and commercial relationship between the products justified treating them as allied and cognate goods.

Judicial Precedents Relied Upon

While reaching this conclusion, the Court referred to the following precedents:

• FDC Limited v. Docsuggest Healthcare Services Pvt. Ltd., 2017 SCC OnLine Del 6381.
• Raj Kumar Sharma v. Sandeep Kumar, 2023 SCC OnLine Del 492.
• Radico Khaitan Ltd v. Devans Modern Breweries Ltd, 2019 SCC OnLine Del 7483.
• Today Tea Ltd. v. Today Foods Pvt. Ltd., 2019 SCC OnLine Del 8345.
• Preetendra Singh Aulakh v. Green Light Foods Pvt. Ltd., MANU/DE/2853/2023.

Application of the Anti-Dissection Rule

The court next considered the defendants’ reliance on the anti-dissection rule and the decision of the Supreme Court in Pernod Ricard India Pvt. Ltd v. Karamveer Singh Chhabra, 2025 SCC OnLine SC 1701. While acknowledging that composite marks must ordinarily be assessed as a whole, the Court held that the dominant and essential feature of the defendants’ branding remained the word “GODFATHER”. The addition of “THE GLENWALK” and “BY SANJAY DUTT” did not sufficiently dilute the prominence of that expression.

Knowledge of the Plaintiff’s Existing Trademark Rights

The Court also noted that the defendants had earlier sought registration of “THE GODFATHER” and had responded to objections raised by the Trade Marks Registry concerning the plaintiff’s existing registrations. This demonstrated awareness of the plaintiff’s rights and cast doubt on the bona fides of the adoption.

Finding on Goodwill, Dilution and Unfair Advantage

Ultimately, the Court concluded that the plaintiff’s mark had acquired substantial goodwill over four decades and that consumers were likely to associate the defendants’ whisky products with the plaintiff. The Court found that the ingredients of Section 29(4) of the Trade Marks Act, 1999, relating to dilution and unfair advantage were prima facie satisfied.

Final Decision of the Court

The court held that the plaintiff had established a strong prima facie case for the grant of interim relief. It found that continued use of “GODFATHER” or “GODFATHER’S” by the defendants was likely to dilute the plaintiff’s trademark and cause consumer association with the plaintiff’s business.

The interim injunction application was allowed. The defendants, their officers, agents, successors, and all persons acting on their behalf were restrained from manufacturing, bottling, marketing, advertising, selling, exporting, or otherwise using the marks “GODFATHER” or “GODFATHER’S” in relation to whisky during the pendency of the suit.

The defendants were also directed to remove all online advertisements, listings, social media posts, and digital content bearing the impugned marks and to initiate take-down requests wherever such content had been published.

Point of Law Settled

The judgement reinforces the principle that a validly registered trademark remains enforceable unless rectified or cancelled in accordance with law, and allegations of non-use alone do not defeat infringement claims at the interim stage.

The decision further clarifies that beer and whisky may constitute allied and cognate goods despite being classified separately, where their nature, trade channels, consumer base, and commercial realities demonstrate a sufficient relationship.

The ruling also reiterates that the anti-dissection rule does not protect a composite mark where the dominant and essential feature is identical or deceptively similar to another party’s registered trademark. Courts may grant injunctive relief where such use is likely to cause confusion, dilution, or unfair exploitation of goodwill.

Key Legal Principles Established

Case Details

• Trademark Infringement and Passing Off Involving Numerals: Haywards 5000 Vs Cox 5001
• Delay, Acquiescence, And Waiver Can Bar Trademark Rectification Proceedings
• Khoday Distilleries Ltd v. Scotch Whisky Association: Supreme Court Landmark Judgment on Deceptive Trademarks, Peter Scot Whisky & Trademark Rectification
• Decoding Transparency: Addressing Ambiguities in India’s Food and Alcoholic Beverage Labelling Regulations
• Publici Juris and Laudatory Terms: Non-Monopolisation in Trademark Law