Delhi High Court removes the mark "CAPTAIN BLUE" from the Register, upholding Diageo's family of marks

Introduction

Recently, in the case of Diageo Scotland Limited v. Prachi Verma and Anr.[1], the Delhi High Court allowed the appeal and directed the Learned Registrar of Trade Marks (hereinafter referred to as the “Respondent No. 2”) to remove the mark “CAPTAIN BLUE” (hereinafter referred to as the “impugned mark”) from the Register of Trade Marks. The Court held that there existed a significant likelihood of the impugned mark being associated with the family of “CAPTAIN” marks belonging to the Appellant.

Background

The Appellant is a wholly owned subsidiary of Diageo PLC and forms part of the globally renowned Diageo Group, which holds a vast and diverse portfolio of spirit brands. The “CAPTAIN” formative has become the nucleus of an extensive branding architecture of the Appellant. The Appellant has been using the brand ‘CAPTAIN’ in India since 2006 and has also obtained registrations for the marks “CAPTAIN” and “CAPTAIN MORGAN” in Class 33. Whereas Prachi Verma (hereinafter referred to as the “Respondent No. 1”) filed an application for registration of the impugned mark in Class 33 on a proposed to be used basis. The Appellant opposed the impugned application on the grounds of deceptive similarity, lack of bona fide adoption, and likelihood of causing confusion among the public. The said opposition was rejected on the basis that the marks of the parties, as a whole, were found to be distinctive, and also on account of the existence of unrelated third-party registrations containing the term “CAPTAIN.” Aggrieved by the said order, the Appellant filed an appeal against the order passed by Respondent No. 2.

The Appellant, in addition to submitting that the marks were deceptively similar, contended that the order suffers from manifest legal infirmities, as it overlooks the prior statutory and common 

law rights of the Appellant vested in its family of “CAPTAIN” marks. Further, the Appellant submitted that Respondent No. 2 failed to take into account that the Appellant is the prior and registered proprietor of the marks “CAPTAIN” and “CAPTAIN MORGAN” and also holds multiple registrations in respect of the said family of marks. The Appellant also contended that the addition of the word ‘BLUE’ does not distinguish the impugned mark from that of the Appellant’s marks. The impugned mark was applied for on a "proposed to be used" basis, and no evidence of actual use was placed on record. The Appellant further contended that Respondent No. 2 rejected the opposition without considering the above submissions. It was also submitted by the Appellant that the third-party marks comprising “CAPTAIN,” relied upon by Respondent No. 1, were either withdrawn, refused, abandoned, or opposed by the Appellant itself, and the same was wholly ignored in the impugned order.

The Respondent No. 1 neither filed a reply nor appeared before the Court and was accordingly proceeded ex parte. On the other hand, Respondent No. 2 contended that the marks of the parties are distinctively different and that the impugned mark would not be considered a derivative of the Appellant’s marks. It was submitted that there is no ‘semantic similarity’ between the impugned mark and the marks of the Appellant. Lastly, it was contended that another opposition filed by the Appellant involving the same mark(s) against a third party had also been rejected, and since that rejection was not challenged, the Appellant is precluded from challenging the present impugned order as well.

Findings of the Court

The Court observed that the Appellant is not only the prior adopter but also the registered proprietor of the marks “CAPTAIN” and “CAPTAIN MORGAN,” and holds several similar registrations. Further, the Appellant has been continuously using the said marks and has acquired immense goodwill therein, both internationally and in India. In view of the above, the Court held that there is every likelihood of the impugned mark of Respondent No. 1 being perceived as yet another variant emanating from the Appellant and being falsely associated with the Appellant’s marks. The Court further held that the impugned mark comprises the dominant and source-identifying feature of the family of “CAPTAIN” marks belonging to the Appellant, with the mere addition of the suffix “BLUE” thereto for identically similar goods, namely alcoholic beverages. Such addition was found to be insufficient to distinguish the impugned mark, as there existed every likelihood of it being associated with the family of “CAPTAIN” marks belonging to the Appellant, thereby causing confusion among members of the trade as well as the general public.

The Court also relied on the fact that Respondent No. 1 failed to provide any evidence of actual use, commercial intent, or bona fide adoption of the impugned mark. The Court observed that there are no other “CAPTAIN” marks in Class 33, nor any actual users thereof, apart from the Appellant, who is the exclusive and sole owner and registered proprietor of the family of “CAPTAIN” marks. Accordingly, the Court held that the impugned mark ought to have been refused registration and that the impugned order is liable to be set aside. Consequently, the appeal was allowed, and the Registrar of Trade Marks was directed to remove the entry pertaining to the application for the impugned mark from the Register of Trade Marks.

Conclusion

The Delhi High Court’s decision to remove the mark "CAPTAIN BLUE" from the Register of Trade Marks reinforces the protection of well-established family marks. The Court reinforced that all factors must be thoroughly considered in opposition matters, as the stakes for the parties’ intellectual property rights are significant.

Reference:

 C.A. (COMM.IPD-TM)7/2025