Delhi High Court Quashes Trademark Registration Of 'Captain Blue' In Plea By Producer Of 'Captain Morgan' Rum

Diageo Scotland Limited (appellant) is a part of the Diageo Group which holds a vast and diverse portfolio of spirit brands.  Its flagship brand includes 'Captain Morgan' and sub-brands such as 'Captain Morgan Gold', 'Captain Morgan White Rum' and 'Captain Morgan Dark Rum'

Diageo stated that the 'Captain' brand has been continuously and extensively used in India since 2006. It stated that for 2023, Captain Morgan brand had sales of approximately USD 6.48 million in India.

Diageo submitted that one Prachi Verma (respondent no. 1) filed a trademark application for the mark 'Captain Blue' in Class 33 category for alcoholic beverages, on a 'proposed to be used' basis. Diageo filed an opposition to the trademark application on the grounds of deceptive similarity, lack of bona fide adoption and likelihood of causing confusion among the public.

However, the Assistant Registrar of Trade Marks rejected the opposition, noting that the impugned mark when compared as a whole was distinctive from that of Diageo. Diageo thus files the present appeal against the Assistant Registrar's order.

Justice Saurabh Banerjee noted that Diageo is a prior user and registered proprietor of the 'Captain' trademark. The Court noted that Diageo has acquired immense goodwill in India and internationally over its 'Captain' and other formative marks.

On the respondent's mark, the Court observed that merely adding 'Blue' for very similar goods/alcoholic beverages is not sufficient evidence for it to be distinct. It stated that there is the likelihood that the impugned mark would be considered as another variant of Diageo. It observed that the 'Captain' has become a source-identifying feature of Diageo's products and the impugned product would cause confusion among the traders and public that it belongs to the appellant.

The Court further noted the respondent filed the application on a proposed to be used basis and did not file any evidence showing actual use, commercial intent or showing cause of bona fide adoption. It noted that the Assistant Registrar of Trade Marks did not take these aspects into considerations in its order.

The Court thus held that the registration granted to the impugned mark was liable to be set aside. It directed the Registrar of Trade Marks to remove 'Captain Blue' from its registry.

Case title: Diageo Scotland Limited vs. Prachi Verma & Anr.

Citation: 2025 LiveLaw (Del) 451