By Rishabh Gupta and Akshita Makin
Introduction
The Delhi High Court has granted an ad-interim injunction restraining Cartel Bros Private Limited from manufacturing, marketing, or selling whisky under the mark “GODFATHER” or its variant “GODFATHER’S,” in a suit brought by Devans Modern Breweries Limited. The Single Judge held that the Plaintiff is the registered proprietor of the mark since the 1980s for beer and since 2005 for other alcoholic beverages had made out a prima facie case of infringement and passing off, and that beer and whisky, notwithstanding their obvious differences, constitute allied and cognate goods for the purposes of the dispute. For a Defendant that had spent three years, enlisted Sanjay Dutt as the face of its brand, and reportedly earned over Rs. 212 crores building a whisky business around its own ‘Godfather,’ the injunction is a costly setback.
Brief Facts
Devans Modern Breweries Limited, founded in 1961 by industrialist Shri Dewan Gian Chand, one of India’s leading manufacturers of malt, spirits, and beer, marketing products under brands such as GODFATHER, KOTSBERG, GIANCHAND, OLD VAT, and SIX FIELDS. The Plaintiff claims to have adopted the mark “GODFATHER” in 1984 for beer in Class 32, and to have secured registrations for the same mark in Class 33, covering alcoholic beverages other than beer including rum and whisky, as far back as 2005.
The dispute arose after the Plaintiff came across a Facebook post by Cartel Bros Private Limited announcing the imminent launch of a whisky under the mark “GODFATHER”. A subsequent investigation on the website of the registrar of trademarks revealed that the Defendant had filed applications incorporating the Plaintiff’s registered mark in Class 33 on January 19, 2026 and February 18, 2026, both on a ‘proposed to be used’ basis. Aggrieved, the Plaintiff instituted the present suit for infringement and passing off and further sought an interim injunction. The Defendant, for its part, filed a rectification petition on March 12, 2026 seeking cancellation of the Plaintiff’s class 33 registration on the ground of non-use.
Contentions of the Plaintiff
The Plaintiff, argued that “GODFATHER” is an arbitrary mark, when applied to the concerned goods, and has been used continuously since the 1980’s for beer and since 2005 for rum and whisky, hence the mark is entitled to a higher degree of protection. The Ld. Senior Counsel submitted that the Plaintiff was the first in the market to use the mark for alcoholic beverages. Reliance was placed further placed on sales figures of Rs. 7,46,73,99,542 for FY 2024-25 and advertisement and sales-promotion spending of Rs. 4,23,34,378 for the same year, alongside decades of promotional activity, to establish goodwill. It was submitted that the Defendant, incorporated only in 2022 and launching its whisky only in 2026, dishonestly adopted an identical mark “GODFATHER” with full knowledge of the Plaintiff’s registration, and that neither the prefix ‘THE’ nor the composite packaging created any meaningful distinction.
The Plaintiff further contended that beer and whisky are allied and cognate goods, applying a ‘commercial reality test’ drawn from the nature of the goods, a common consumer base, shared trade channels and a common excise regime. On that footing, it was submitted that Sections 29(1), 29(2) and 29(4) of the Trade Marks Act, 1999 were all attracted. Counsel also relied on the Defendant’s reply to the Trade Marks Registry’s examination report, an objection that had itself cited the Plaintiff’s mark to submit that the Defendant was aware of the Plaintiff’s rights when it adopted the mark.
Contentions of the Defendant
On the Composite Mark and the Anti-Dissection Rule
The Defendant, argued that without prejudice to the defence raised by the Defendant, the impugned mark has since been revised to a composite mark being, “THE GLENWALK GODFATHER’S BY SANJAY DUTT,” and that under the anti-dissection rule the mark must be assessed as a whole rather than dissected into individual elements. It was submitted that the dominant, source-identifying feature of the composite mark was “THE GLENWALK,” denoting Scotch whisky, together with the personality endorsement of Sanjay Dutt, rendering the marks visually and phonetically dissimilar. The Defendant offered to withdraw its pending wordmark application for “THE GODFATHER” if permitted to use the revised, composite mark instead.
On Allied and Cognate Goods
The Defendant argued that beer and whisky are separated by a ‘notable’ and, in its case, decisive difference in alcohol content as beer ordinarily containing around 8% alcohol against 48% for the Defendant’s whisky. It was submitted that whisky is generally sipped in small, often-mixed measures, while beer is consumed by the pint, can, or tap; that whisky can be stored indefinitely at room temperature while beer is perishable and must be refrigerated; and that the mark ‘GLEN’ itself operates as a geographical signal of Scotch origin, further distancing the Defendant’s product from an Indian-brewed beer. In. terms of price, counsel argued, told the same story that the Plaintiff’s beer retails at roughly Rs. 100 a bottle against Rs. 1,750 for the Defendant’s whisky, a gap said to reflect two entirely different, non-overlapping consumer bases. Counsel further relied on the UK Caledonian decision, where a mark for whisky had been permitted to coexist with a similar mark for beer on the footing that the goods were dissimilar, to argue that no likelihood of confusion could arise between the Plaintiff’s beer and the Defendant’s whisky even if the rival marks were found to be similar.
On non-use, the Defendant contended that the Plaintiff had not sold whisky under ‘GODFATHER’ since at least 2013, pointing to the absence of any excise licence for whisky manufacture after 2007, invoices confined to sales to CRPF/BSF canteens in Jammu and Kashmir, and total Class 33 turnover of barely Rs. 18 crores across two decades against its own Rs. 212 crores in three years. It was also pointed out that the Plaintiff’s own website promotes its whisky under the brands ‘Devans Gianchand’ and ‘Devans Old Vat Premium’ rather than ‘GODFATHER.’ Since ‘GODFATHER’ is a dictionary word, counsel argued, the Plaintiff could claim no exclusivity in Class 33 without proof of acquired secondary significance proof it said was conspicuously absent.
Hon’ble Court’s Analysis:
On Non-Use:
The Hon’ble Court held that registration under Sections 18 and 28 of the Trade Marks Act, 1999 confers exclusive rights irrespective of actual use. The Hon’ble Court relied on the Hon’ble Supreme Court’s ruling in Gujarat Bottling Co. Ltd. v. Coca Cola Co. [1]that a registered proprietor may sue for infringement irrespective of whether or not the mark is in use. Mere non-use, cannot disentitle a registered proprietor from enforcing its mark, and the Defendant’s rectification petition filed only on March 12, 2026 did not by itself create any presumption against the validity of the Plaintiff’s registration. In any event, the Hon’ble Court found that the Plaintiff’s invoices and Chartered Accountant’s certificate for 2007–2013 constitute prima facie evidence of actual use, leaving the questions of the credibility of the invoices to trial.
On Allied and Cognate Goods
The Hon’ble Court accepted that the price differential was a “sharp divide” between the two products, and that a whisky drinker would not stray into buying beer, or vice versa, even where both sit in the same store. However, the Hon’ble Court held the perception of the consumer is not the metric, rather, it is parameters like the kind, nature and intended use of the products, which would form the benchmark for determining whether goods are allied and cognate, not on how discerning or price-sensitive the buyer happens to be. Applying the aforesaid test, the Hon’ble Court found that beer and whisky are both alcoholic beverages, share common trade channels and retail outlets in India, and fall within the same excise regime, and held that the competing goods are prima facie allied and cognate. The Hon’ble Court supported its findings by placing reliance on the celebrated judgments of FDC Limited v. Docsuggest Healthcare Services[2] and Radico Khaitan Ltd. v. Devans Modern Breweries Ltd.[3] for the proposition that classification under different Classes is not determinative of dissimilarity.
On the Anti-Dissection Rule
The Hon’ble Court rejected the Defendant’s composite-mark defence. The Hon’ble Court held that the Plaintiff’s mark is registered as a word mark, simply placing “GODFATHER” inside a larger label does not shield it as the anti-dissection rule protects a composite mark only where no single word stands out on its own. Here, “GODFATHER” or “GODFATHER’S” remained bold and prominent in both the Defendant’s original and revised marks, regardless of the smaller font, the added apostrophe, or the “BY SANJAY DUTT” subscript beneath it.
On Likelihood of Confusion and Dishonest Adoption
The Hon’ble Court distinguished the UK Caledonian decision where a mark for whisky was allowed to coexist with a similar beer mark on the ground that, unlike the opponent in that case, the Plaintiff here held a valid Class-33 registration supported by invoices and a CA certificate evidencing actual use, and that distribution channels in India (unlike the UK) are largely shared between beer and whisky. The Defendant’s own reply to the Trade Marks Registry’s examination report, which had cited the Plaintiff’s mark, indicated prior awareness of the Plaintiff’s rights, undermining any claim of bona fide adoption.
Conclusion and Relief
The Hon’ble Court, after applying the above tests, held that the Plaintiff had established a prima facie case, with the balance of convenience in its favour and a risk of irreparable harm through dilution of its mark. Accordingly, the Hon’ble Court restrained the Defendants from manufacturing, bottling, marketing, selling, offering for sale, advertising, or exporting whisky under the mark ‘GODFATHER’ or ‘GODFATHER’S,’ or any deceptively similar mark, trade dress, or packaging, during the pendency of the suit. The Defendants were further directed to forthwith take down all listings, advertisements, and content bearing the Plaintiff’s mark across websites, e-commerce platforms, and social media, and to issue take-down requests to third-party platforms.
The Author’s Take
The outcome emphasises the statutory scheme of the Trademarks Act that its prior adopter and registrant of a trademark is entitled to protection for their mark irrespective of use. This judgment also reinforces the concept of allied and cognate goods by applying tests that are relevant for determining the likelihood of confusion instead of parameters such as price difference, difference in composition or storage conditions.
It is borne from the fact that the Hon’ble court while determining whether the goods were allied and cognate considered whether the competing products belonged to the same commercial world i.e. same trade channels, same excise regime, same broad category of “alcoholic beverage.”
The test of ‘allied and cognate’ is not a statutory principle but is a creation of the Hon’ble courts as the Hon’ble courts recognize the commercial reality that goods may not necessarily fall within the same class but are nonetheless similar in their nature which heightens the possibility of confusion, especially in case the competing marks are identical.
This case also shows that a well-funded whisky brand with Bollywood endorsement cannot claim any special status and must abide by the statutory scheme and settled principles of law or risk having their business stalled by judicial intervention. For spirits companies doing due diligence before a launch, the lesson from Godfather is blunt: a search across your own Class is not enough and the commercial realities must be considered before any foray is made into the market.
[1] (1995) 5 SCC 545
[2] 2017 SCC OnLine Del 6381
[3] 2019 SCC OnLine Del 7483