Court Restrains Cartel Bros from Using "GODFATHER" for Whisky, Citing Likelihood of Consumer Confusion
In a significant ruling, the Delhi High Court has granted an ad-interim injunction in favor of Devans Modern Breweries Limited, restraining Cartel Bros Private Limited from using the trademark "GODFATHER" or "GODFATHER'S" in connection with their whisky products. The court's decision was based on Devans Modern Breweries' prior registration and substantial goodwill associated with the "GODFATHER" trademark, which has been in use for over four decades.
The case, presided over by Justice Tushar Rao Gedela, highlighted the plaintiff's continuous use of the "GODFATHER" trademark for beers since the 1980s and for alcoholic beverages, including whisky, under Class-33 since 2005. The court emphasized that the plaintiff's trademark registration under the Trademarks Act, 1999, provided them with exclusive rights to use the mark, irrespective of its current use.
Cartel Bros' attempt to launch a whisky product using the disputed mark was challenged by Devans Modern Breweries, citing the likelihood of consumer confusion and the potential dilution of their brand's distinctiveness. The court found that both beer and whisky, despite their different price points and consumer bases, are allied and cognate goods, sharing common trade channels and regulatory frameworks.
In its analysis, the court rejected the defendant's argument that the composite nature of their revised mark "THE GLENWALK GODFATHER'S BY SANJAY DUTT" differentiated it sufficiently from the plaintiff's "GODFATHER" trademark. The court held that the prominent use of "GODFATHER" in both marks could mislead consumers, thus justifying the injunction.
Justice Gedela's order emphasized that the balance of convenience favored the plaintiff, and the potential harm from trademark dilution and consumer confusion warranted immediate judicial intervention. The decision mandates Cartel Bros to cease all marketing, sale, and promotion of their whisky products under the contested mark during the litigation's pendency.
Bottom Line:
Trademarks Act, 1999 - Plaintiff entitled to ad-interim injunction against defendants for using the mark "GODFATHER" or "GODFATHER'S" in respect of whisky, on account of prior registration, substantial goodwill, and likelihood of confusion among consumers.
Statutory provision(s):
Trademarks Act, 1999 Sections 18, 28, 29
