Delhi High Court Protects “CAPTAIN” Family of Marks: Diageo Scotland Limited v. Prachi Verma and Anr.

Summary

In one of the trademarks cases, the Delhi High Court set aside the ruling by the Assistant Registrar of Trade Marks, who had accepted Diageo Scotland Limited’s objections against the registration of the mark “CAPTAIN BLUE” till the opposition was resolved. The Court supports Diageo’s claim over “CAPTAIN” trademark series which includes the renowned “CAPTAIN MORGAN” trademark on the grounds that “CAPTAIN BLUE” would be confusingly similar and would cause diversion of consumers.

Timeline of the Case

• On January 27, 2020, the mark “CAPTAIN BLUE” was published in the Trademarks Journal.

• Diageo filed Opposition No. 1043295, and this opposition was registered.

• The Opposition was dismissed by the Assistant Registrar of Trade Marks on October 1, 2024.

• Respondent No. 1 was served notice on March 12, 2025, and did not appear or file a reply.

• Judgment was reserved after the final arguments on April 8, 2025.

• April 16, 2025, is the day the judgment was pronounced by the Delhi High Court.

Issue Raised

Whether the impugned trademark “CAPTAIN BLUE” is deceptively similar to the appellant’s registered trademarks “CAPTAIN” and “CAPTAIN MORGAN” in Class 33 and whether its registration ought to be refused to prevent consumer confusion and dilution of the appellant’s brand.

Appellant’s Arguments (Diageo Scotland Limited)

• Diageo is the registered proprietor of the trademarks “CAPTAIN” (Reg. No. 1485228) and “CAPTAIN MORGAN” (Reg. No. 708544), both in Class 33 for alcoholic beverages, and has been using them extensively since 2006 in India.
• The mark “CAPTAIN BLUE” wholly incorporates the dominant and source-identifying element “CAPTAIN”, leading to a likelihood of confusion and false association.
• The mark was filed by Respondent No. 1 on a “proposed to be used” basis, with no evidence of bona fide use or intent submitted.
• The Registrar erroneously relied on unrelated third-party registrations containing “CAPTAIN” without considering that most were either opposed, withdrawn, or abandoned.
• The impugned order ignores prior statutory and common law rights of the appellant and if allowed, would open floodgates to imitation, harming brand distinctiveness.

Respondents’ Arguments

• Argued that “CAPTAIN BLUE” is not deceptively similar and has its own distinctiveness.
  • Relied on Vinita Gupta v. Amit Arora and Corn Products Refining Co. v. Shangrila Food Products Ltd. to argue against likelihood of confusion.
  • Claimed third-party marks with “CAPTAIN” show it is not exclusively associated with Diageo.
  • Also stated that Diageo had not challenged a similar rejection in another matter.

Judgment

The Delhi High Court allowed the appeal and set aside the impugned order of the Assistant Registrar. The Court concluded that “CAPTAIN BLUE” is deceptively similar to Diageo’s previously registered and well-known marks and is likely to cause deception or confusion among the public, particularly because the concerned products, alcoholic beverages, are the same. Respondent No.1’s application, as such, was directed to be removed from the Register of Trade Marks.

Analysis

This ruling strengthens the judicial appreciation of prior user rights and reputation of a trademark in law. The ruling is consistent with Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., which even slight differences in a trademark should not be tolerated if the confusing part is the most important one. Also, the ruling highlights the gaps in the arguments provided by applicants who file marks on a proposed-to-be-used basis. Besides, the absence of proof regarding market activity or judicial recognition for outsider registrations cannot remove the rights of an existing trademark holder. This ruling aids IP practitioners and brand owners because it strengthens enforcement actions against trademark dilution and enforces the need to defend a brand’s reputation by proactive trademark opposition through watching the trademark register.