“Mere Addition of ‘BLUE’ Doesn’t Wash Away Confusion”: Delhi High Court Cancels ‘CAPTAIN BLUE’ Trademark, Upholds Diageo’s Rights Over ‘CAPTAIN’ Marks
Sanchayita Lahkar
The High Court of Delhi Single Bench of Justice Saurabh Banerjee, allowed an appeal challenging the registration of the trademark "CAPTAIN BLUE" in Class 33. The Court directed the removal of the impugned mark from the Register of Trade Marks, holding that it bore deceptive similarity with the appellant's existing trademarks, particularly the reputed "CAPTAIN MORGAN" brand.
The Court directed the Registrar of Trade Marks to remove application no. 4398295 for the mark "CAPTAIN BLUE" from the register and forwarded a copy of the judgment for compliance.
The appellant, Diageo Scotland Limited, a wholly owned subsidiary of Diageo PLC, contested the order passed by the Assistant Registrar of Trade Marks dated October 1, 2024. The order had dismissed the appellant's Opposition against the registration of the mark "CAPTAIN BLUE" by respondent no.1 Prachi Verma, under application no. 4398295 in Class 33 for alcoholic beverages.
The appellant, part of the globally renowned Diageo Group, owns the flagship rum brand "CAPTAIN MORGAN," which was launched in 1982 and acquired by Diageo in 2001. The appellant stated that it holds registered trademarks for "CAPTAIN" (registration no. 1485228) and "CAPTAIN MORGAN" (registration no. 708544) in Class 33, and various sub-brands including "CAPTAIN MORGAN GOLD," "CAPTAIN MORGAN WHITE RUM," and "CAPTAIN MORGAN DARK RUM."
According to the appellant, the mark "CAPTAIN" has been in continuous and extensive use in India since 2006 and has gained formidable consumer recognition. In 2023, the brand reportedly generated approximately USD 6.48 million in India.
The impugned application for the mark "CAPTAIN BLUE" was filed by respondent no.1 on a "proposed to be used" basis and published in the Trade Marks Journal on January 27, 2020. The appellant filed Opposition no. 1043295, arguing that the impugned mark was deceptively similar, lacked bona fide adoption, and was likely to cause confusion.
The Assistant Registrar dismissed the Opposition, citing that "CAPTAIN BLUE," when viewed as a whole, was distinctive and also noted the existence of third-party registrations containing the word "CAPTAIN."
Appellant's counsel submitted that the impugned order overlooked statutory and common law rights in the "CAPTAIN" family of marks and failed to recognize the deceptive similarity between "CAPTAIN BLUE" and the appellant's registered marks. It was argued that the inclusion of "CAPTAIN" in the impugned mark, a dominant and source-identifying component, could falsely associate the new mark with the appellant's established brand.
Further, it was stated that respondent no.1 failed to submit any evidence of actual use, commercial intent, or bona fide adoption under Rule 46 of the Trade Marks Rules, 2017. No documents accompanied the Counter Statement, and the mark remained unsubstantiated.
The appellant stated that the impugned mark could be perceived as another variant of its existing trademarks, particularly in the same product category. Additionally, it was asserted that permitting the registration would result in public confusion and erode the distinctiveness of the appellant’s brand.
The Court noted that respondent no.1 neither filed a reply nor appeared during the proceedings despite being served. Consequently, she was proceeded ex parte.
Respondent no.2, representing the Trade Marks Registry, defended the impugned order, arguing that the marks in question were not derivatives of each other and relied on the cases Vinita Gupta v. Amit Arora and Corn Products Refining Co. v. Shangrila Food Products Ltd.
In rejoinder, the appellant contended that the precedents cited by the Registry supported its claims, and also pointed out that the third-party "CAPTAIN" marks referred to during oral arguments were either abandoned, opposed, refused, or withdrawn. A detailed tabulation of over 80 such marks was submitted, but not considered by the Assistant Registrar.
The appellant also clarified that the registration of the mark "CAPTAIN" by IFB Agro Industries was not indicative of dilution, as a confidential Settlement Agreement had been entered with IFB.
The Court recorded that the appellant was a prior adopter and registered proprietor of the trademarks "CAPTAIN" and "CAPTAIN MORGAN," and had acquired goodwill both internationally and domestically. It noted: "There is every likelihood of the impugned mark 'CAPTAIN BLUE' of the respondent no.1 to be perceived as yet another variant emanating from the appellant and be falsely associated with the mark(s) of the appellant."
The Court further stated: "Merely adding the suffix 'BLUE' thereto... is not sufficient evidence for it to be distinct as there is every likelihood of associating of the same with that of the family of 'CAPTAIN' marks belonging to the appellant as also causing confusion amongst the members of the trade as well as in the minds of the general public."
It was observed that respondent no.1 had filed the application on a "proposed to be used" basis and failed to provide any documents under Rule 46 or evidence of use, commercial intent, or bona fide adoption. The Court remarked: "There was no evidence of genuine intention or commercial justification of the adoption of the impugned mark 'CAPTAIN BLUE', and that too in Class 33."
Additionally, the Court noted the absence of any argument or explanation from respondent no.1 regarding awareness or non-awareness of the appellant’s marks and recorded: "There is a remarkable sameness inter se them."
The judgment also stated that the Assistant Registrar failed to consider the absence of other active "CAPTAIN" marks in Class 33, apart from the appellants.
The Court held that the impugned mark ought to have been refused registration under Section 11 of the Trade Marks Act, 1999. It also found that the appellant was entitled to the statutory protection and exclusivity under Section 28 of the Act.
It was recorded: "The impugned order dated 01.10.2024 passed by the respondent no.2 is, thus, set aside."
The judgment directed: "The Registrar of Trade Marks is directed to remove the entry pertaining to the application bearing no. 4398295 for the mark 'CAPTAIN BLUE' from the Register of Trade Marks forthwith."
Advocates Representing the Parties:
For the Appellant: Mr. Peeyoosh Kalra, Ms. V. Mohini, Ms. Aarti Aggarwal, and Mr. Yashwant Singh Bagel.
For the Respondent: Ms. Nidhi Raman, CGSC with Mr. Debashish Mishra and Mr. Arnav Mittal.
Case Title: Diageo Scotland Limited v. Prachi Verma and Anr.
Neutral Citation: 2025: DHC:2612
Case Number: C.A. (COMM.IPD-TM) 7/2025
Bench: Justice Saurabh Banerjee
[Read/Download order]
