Delhi High Court Grants Interim Relief in the “GODFATHER” Whisky Trademark Dispute

In Devans Modern Breweries Ltd. v. Cartel Bros. Pvt. Ltd. & Anr., CS(COMM) 346 of 2026, the Delhi High Court granted an interim injunction restraining the Defendants from using the mark “GODFATHER” as part of their whisky brand. This case examines trademark infringement involving allied alcoholic beverage categories and the limits of the anti-dissection rule.

Summary

The Court held that the Plaintiff had established a strong prima facie case of trademark infringement. It found that beer and whisky are allied and cognate goods, that the Defendants had adopted the essential feature of the Plaintiff’s registered trademark “GODFATHER,” and that merely incorporating the mark within a composite label did not avoid infringement.

The Defendants’ impugned mark was “THE GLENWALK GODFATHER’S BY SANJAY DUTT.” The Court further observed that the Defendants’ adoption prima facie cast doubt on their bona fides, particularly as they were aware of the Plaintiff’s prior registrations.

Facts of the Case

Plaintiff’s Claims

The Plaintiff, Devans Modern Breweries Ltd., is the registered proprietor of the trademark “GODFATHER,” which has been used extensively in relation to beer since 1984 and is also registered in Class 33 for alcoholic beverages. The Plaintiff claimed that the mark had acquired substantial goodwill and reputation through extensive sales, advertising, and long-standing use.

The Defendants proposed to market Scotch whisky under the marks “THE GODFATHER” and subsequently “THE GLENWALK GODFATHER’S BY SANJAY DUTT.” The Plaintiff alleged that the Defendants had deliberately adopted the dominant feature of its well-known trademark in order to ride upon its reputation and create an association with the Plaintiff’s products.

Defendants’ Contentions

The Defendants opposed the application for interim injunction by contending that the impugned mark was a composite label in which “THE GLENWALK” and “BY SANJAY DUTT” were the distinguishing source identifiers.

They further argued that the Plaintiff’s principal business was beer, whereas the Defendants dealt in whisky, and therefore there was no likelihood of confusion.

Issue Before the Court

Whether the Defendants’ use of the marks “THE GODFATHER” and “THE GLENWALK GODFATHER’S BY SANJAY DUTT” in relation to whisky infringed and diluted the Plaintiff’s registered trademark “GODFATHER,” notwithstanding that the impugned mark formed part of a composite label and the goods involved were different alcoholic beverages.

Findings of the Court

The Court held that the Plaintiff had established a strong prima facie case for the grant of an interim injunction.

Beer and Whisky as Allied and Cognate Goods

The Court rejected the Defendants’ contention that beer and whisky were distinct goods incapable of causing confusion. It observed that both products are alcoholic beverages sold through common trade channels, including:

• Liquor outlets
• Bars
• Restaurants

Both products are also regulated under the same statutory framework. The relevant inquiry was not whether consumers would mistake beer for whisky, but whether the goods were allied and cognate in nature. Applying this test, the Court held that beer and whisky were sufficiently connected for the purposes of trademark protection.

Anti-Dissection Rule and Composite Labels

The Court further held that the Defendants could not rely upon the anti-dissection rule merely because the impugned mark formed part of a composite label. The Plaintiff owned a registered word mark “GODFATHER,” and the word “GODFATHER” continued to remain the essential, dominant and memorable feature of both the Defendants’ original and revised labels.

The addition of expressions such as “THE GLENWALK,” “BY SANJAY DUTT,” stylisation, or changes in font size did not materially alter the overall commercial impression created by the impugned mark.

Essential Feature Doctrine and Deceptive Similarity

Relying upon the principles governing comparison of trademarks, the Court held that although marks must be considered as a whole, the essential feature doctrine remained relevant as an analytical aid in determining deceptive similarity.

Even on a holistic comparison, the dominant impression conveyed by the Defendants’ mark continued to be the word “GODFATHER,” resulting in a likelihood of association with the Plaintiff’s well-established brand.

Bona Fides of Adoption

The Court also noted that the Defendants had applied to register “THE GODFATHER” on a proposed-to-be-used basis and that the Trade Marks Registry had cited the Plaintiff’s prior registrations during examination.

Despite being aware of the Plaintiff’s rights, the Defendants persisted in adopting the impugned mark. This conduct prima facie cast serious doubt on the Defendants’ bona fides and supported the Plaintiff’s allegation that the impugned adoption was not bona fide.

Infringement Under Section 29(4) of the Trade Marks Act, 1999

The Court further held that the Plaintiff had, prima facie, established a case under Section 29(4) of the Trade Marks Act, 1999. Given the Plaintiff’s extensive reputation in the “GODFATHER” mark, the Defendants’ use was likely to take unfair advantage of, or be detrimental to, the distinctive character and reputation of the Plaintiff’s trademark, notwithstanding that the competing products belonged to different categories of alcoholic beverages.

Decision (Held)

The Delhi High Court granted an interim injunction restraining the Defendants from using the following marks in relation to whisky during the pendency of the suit:

• “GODFATHER”
• “GODFATHER’S”
• “THE GODFATHER”
• “THE GLENWALK GODFATHER’S BY SANJAY DUTT”
• Any other mark incorporating the words “GODFATHER” or “GODFATHER’S”

The Court held that the Plaintiff had established a prima facie case of trademark infringement and that the balance of convenience and likelihood of irreparable injury favoured the grant of interim relief.

Conclusion

The judgment reiterates that beer and whisky constitute allied and cognate goods for the purposes of trademark law and that the anti-dissection rule cannot be invoked to justify appropriation of the essential feature of another’s registered word mark.

Key takeaways from this decision include:

• Incorporation of a registered trademark within a composite label will not avoid infringement where the dominant commercial impression continues to be created by the Plaintiff’s mark.
• Prior knowledge of an existing registration is an important factor in assessing the bona fides of adoption.
• The Delhi High Court continues to protect reputed trademarks against dilution and unfair commercial exploitation across related categories of goods.

Last Updated on 9 July, 2026