Registration Of Trademark Confers Exclusive Right To Sue For Infringement Irrespective Of Whether Mark Is In Use: Delhi High Court

"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 of the said mark," Delhi High Court, in a significant ruling, held that the mere registration of a trademark under Section 18 of the Trade Marks Act, 1999, confers exclusive rights upon the proprietor to seek an injunction against infringement, regardless of whether the mark is currently being used in the ordinary course of trade.

A bench of Justice Tushar Rao Gedela observed that statutory rights under Section 28 enable a proprietor to protect their mark from unauthorized use by third parties.

The plaintiff, Devans Modern Breweries Limited, a leading manufacturer of "GODFATHER" beer since the 1980s, approached the court seeking an interim injunction against Cartel Bros Private Limited. The plaintiff, which also holds registrations for "GODFATHER" in Class 33 for alcoholic beverages like rum and whisky, was aggrieved by the defendants' imminent launch of a whisky brand titled "The Glenwalk Godfather’s By Sanjay Dutt."

The primary question before the court was whether the non-use of a registered trademark in a specific class disentitles the proprietor from seeking an injunction for infringement. The court was also called upon to determine whether beer (Class 32) and whisky (Class 33) constitute allied and cognate goods, and whether the defendant’s composite mark infringed upon the plaintiff’s registered word mark.

Registration Confers Statutory Right To Sue Irrespective Of Use

The court began by interpreting the cumulative effect of Sections 18, 28, and 29 of the Trade Marks Act, 1999. It noted that Section 28 provides a registered proprietor the exclusive right to use the mark and obtain relief in respect of its infringement. The bench clarified that the Act does not contemplate that the exercise of these rights is subject to the continuous use of the trademark alone.

Relying on the Supreme Court’s precedent in Gujarat Bottling Co. Ltd. v. Coca Cola Co., the court emphasized that statutory rights enable a proprietor to sue for infringement regardless of whether the mark is in active use. The court noted that unless a mark is validly rectified or cancelled from the register, the registration remains valid and enforceable.

"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 Goods

While addressing the similarity of products, the court applied the "commercial reality test." It observed that both beer and whisky are alcoholic beverages that share common trade channels, retail outlets, and a common regulatory framework under state excise regulations. The court rejected the defendant's argument that price variation and different alcohol percentages distinguish the goods entirely.

The bench noted that the "kind, nature, and intended use" of the goods are the primary metrics for determining if they are allied or cognate. Since both products are intoxicants consumed by various strata of society and sold through identical distribution outlets like bars and liquor shops, they must be considered related for the purpose of trademark protection.

"Having regard to the fact that beer and whisky both are undoubtedly alcoholic beverages... trade channels and distribution outlets are common; both products are governed by the same excise regime, beer and whisky would be allied and cognate products."

Dominant Feature Test Overrides Anti-Dissection Rule In Infringement

The defendants argued that their mark was a "composite mark" and should be viewed as a whole under the anti-dissection rule. However, the court found that the word "GODFATHER" remained the most prominent and essential feature of the defendant’s label. The bench observed that the defendant had even applied for the registration of "THE GODFATHER" as a standalone word mark, which showed a lack of bona fides.

The court held that even if a rival mark is composite, the principle of anti-dissection does not apply if the essential element of a registered word mark is copied. The bench remarked that the addition of a prefix like "The" or a subscript like "By Sanjay Dutt" does not dilute the prominence of the plaintiff's registered mark in the minds of a general consumer.

"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 or emanates from the plaintiff."

Likelihood Of Confusion And Dilution Under Section 29(4)

The court concluded that allowing the defendants to use the mark would enable them to unfairly ride on the "enormous goodwill" garnered by the plaintiff over four decades. It held that the ingredients of Section 29(4) were met as the use of the identical mark for whisky would be detrimental to the distinctive character and repute of the plaintiff’s trademark.

The bench noted that the plaintiff had demonstrated a massive turnover for its "GODFATHER" brand, which has become exclusively associated with its products. Consequently, any similar mark used in the alcohol sector would lead to a diversion of consumers and an erosion of the mark’s distinctiveness, constituting irreparable harm.

The High Court allowed the application, restraining the defendants from manufacturing, marketing, or selling whisky under the mark "GODFATHER" or "GODFATHER’S" during the pendency of the suit. The court further directed the defendants to take down all digital listings and advertisements containing the infringing mark from social media and e-commerce platforms.

Date of Decision: June 22, 2026