The Delhi High Court on Thursday directed the Trade Marks Registry to remove the ‘Captain Blue’ mark while hearing a plea filed by the alcoholic beverages manufacturer and distributor Diageo Scotland Limited, reported LiveLaw.
According to the report, Diageo Scotland Limited—the appellant in the case—claimed that it holds a vast and diverse portfolio of spirit brands and produces the ‘Captain Morgan’ brand of rums.
Apart from the ‘Captain Morgan’ brand, the Diageo Group also produces sub-brands such as ‘Captain Morgan Gold’, ‘Captain Morgan White Rum’ and ‘Captain Morgan Dark Rum’.
In its plea, Diageo mentioned they have continuously and extensively used that the ‘Captain’ brand in India since 2006. Adding more, they added, stated that Captain Morgan brand had sales of approximately $6.48 million in India in 2023.
What Diageo Group claimed?
In its appeal, the Diageo Group had alleged that Prachi Verma filed a trademark application for the mark ‘Captain Blue’ in Class 33 category for alcoholic beverages.
Raising opposition to Prachi Verma’s move, Diageo stated that the respondent’s trademark application creates deceptive similarity, lacks bona fide adoption, and may cause confusion among the public.
But the Assistant Registrar of Trade Marks rejected the opposition and noted the impugned mark when compared as a whole was distinctive from that of Diageo.
Justice Saurabh Banerjee’s observation:
After hearing the arguments, Justice Saurabh Banerjee noted that Diageo is a prior user and registered proprietor of the ‘Captain’ trademark.
Justice Saurabh Banerjee added Diageo has acquired immense goodwill in India and internationally over its ‘Captain’ and other formative marks.
Among other things, the Court observed that merely adding ‘Blue’ is not sufficient evidence for it to be distinct and may be considered as another variant of Diageo. The court noted Diageo’s arguments and stated that the Assistant Registrar of Trade Marks did not take these aspects into considerations in its order.
In its order, the court directed the Registrar of Trade Marks to remove ‘Captain Blue’ from its registry.
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