Beer & Whisky Are Allied/Cognate Goods; Use Of Identical Mark For Spirits Infringes 'Godfather' Beer Trademark: Delhi High Court

"Mere non-use of a mark without being validly rectified under the provisions of the Act, cannot be deemed to disentitle a registered proprietor from enforcing all and any rights conferred upon it by virtue of Section 28 of the Act," Delhi High Court, in a significant ruling, held that beer and whisky constitute allied and cognate goods, despite substantial differences in price points and target consumer strata.

A bench of Justice Tushar Rao Gedela observed that the use of a mark identical to a registered beer brand for spirits would attract the provisions of Section 29 of the Trade Marks Act, 1999, as both products share common trade channels and regulatory frameworks.

The plaintiff, Devans Modern Breweries Limited, the registered proprietor of the "GODFATHER" trademark since 1984, instituted a suit for infringement and passing off against Cartel Bros Private Limited. The dispute arose when the defendants sought to launch a "GLENWALK GODFATHER’S" whisky, featuring actor Sanjay Dutt as a brand ambassador. While the plaintiff primarily used the mark for beer in Class 32, it also held valid registrations for alcoholic beverages in Class 33.

The primary question before the court was whether beer and whisky can be considered allied and cognate goods for the purpose of determining trademark infringement. The court was also called upon to determine if the non-use of a registered mark in a specific class disentitles the proprietor from seeking an injunction, and whether the "anti-dissection rule" protects a composite mark that incorporates a prominent registered word mark.

Non-Use Does Not Disentitle Registered Proprietor From Suing For Infringement

The court first addressed the defendants' contention that the plaintiff had not actively used the "GODFATHER" mark for whisky in Class 33 for several years. Interpreting Sections 18 and 28 of the Trade Marks Act, the bench clarified that the mere registration of a mark confers exclusive statutory rights upon the proprietor. The court emphasized that non-use does not ipso facto deprive a registrant of the right to sue for infringement.

Relying on the Supreme Court's precedent in Gujarat Bottling Co. Ltd. v. Coca Cola Co. (1995), the bench noted that statutory rights enable a proprietor to sue irrespective of whether the mark is in active use. The court observed that until a registration is validly rectified or cancelled through legal proceedings, it remains enforceable.

"Registration of a mark provides certain rights... the non-use of the registered trademark by a proprietor would not, ipso facto, deprive or disentitle a registered proprietor from exercising the right to sue a third-party for infringement."

Beer And Whisky Are Allied And Cognate Products Despite Price Variation

A pivotal aspect of the judgment was the classification of beer (Class 32) and whisky (Class 33) as allied goods. The defendants had argued that a consumer of elite Scotch whisky priced at Rs. 1,750 would not be confused with a beer consumer paying Rs. 100. However, the court rejected the "price gap" as a definitive metric for determining similarity.

The bench observed that in the Indian context, both products are sold through identical trade channels, such as the same retail shops, bars, and restaurants. Furthermore, they are governed by the same state excise regulations and belong to the broader category of intoxicants consumed by various strata of society for similar purposes.

"The mere fact that there is a huge price variation between the two products or that the consumers of whisky may appear to be elite or distinct... has no nexus with the products themselves. These aspects surely are not a metric to decide whether the products are allied and cognate."

Anti-Dissection Rule Inapplicable If Essential Element Is Copied

The defendants attempted to invoke the "anti-dissection rule," arguing that their revised mark, "THE GLENWALK GODFATHER’S BY SANJAY DUTT," was a composite whole and should not be broken down to find infringement. The court, however, found that "GODFATHER" remained the most prominent and dominant feature of the defendants' label.

The bench held that when a defendant adopts an essential and prominent feature of a registered word mark, the anti-dissection rule cannot be used as a shield. Even with the addition of descriptive or illustrative material like a celebrity's name, the core identifier remains the infringing word, which is likely to lead an average consumer to believe there is an association with the plaintiff.

"Notwithstanding the addition of the apostrophe ‘S’ or even the stylisation... the word GODFATHER or GODFATHER’S appears to be bold and prominent... a general consumer with average intelligence and imperfect recollection is likely to believe that the product is somehow associated with the plaintiff."

Distinction From International Precedents On Consumer Confusion

The court specifically distinguished the UK case of Caledonian, where it was held that there was low confusion between beer and spirits. Justice Gedela noted that retail structures in the UK differ from India, where distribution channels and retail outlets for beer and whisky are common. This shared environment increases the likelihood of a "likelihood of association" under Section 29(4) of the Act.

The bench concluded that the plaintiff had established a prima facie case of infringement and that allowing the defendants to use the mark would allow them to unfairly ride on the plaintiff's forty-year-old reputation. The court found that the balance of convenience favoured the plaintiff, as trademark dilution constitutes irreparable harm that cannot be compensated by damages alone.

The court allowed the application for an interim injunction, restraining the defendants from manufacturing, marketing, or selling any alcoholic products under the mark "GODFATHER" or "GODFATHER’S" during the pendency of the suit. The defendants were further directed to remove all infringing listings and advertisements from digital platforms and social media.

Date of Decision: June 22, 2026