Delhi High Court Rules in Favour of Diageo, Orders Removal of ‘Captain Blue’ Trademark

In a significant judgment concerning trademark rights, the Delhi High Court has ordered the removal of the trademark 'Captain Blue' from the Trade Marks Registry. The decision came in response to a petition filed by Diageo Scotland Ltd., the global producer behind the iconic 'Captain Morgan' range of rums.

Diageo challenged the registration of the 'Captain Blue' mark, which had been filed by Prachi Verma under Class 33, covering alcoholic beverages. The beverage giant contended that the new mark bore a deceptive resemblance to its well-established 'Captain' family of trademarks, which includes products such as ‘Captain Morgan Gold’, ‘Captain Morgan White Rum’, and ‘Captain Morgan Dark Rum’.

Initially, the Assistant Registrar of Trade Marks dismissed Diageo’s opposition, finding that the marks appeared distinct when viewed in their entirety. However, the High Court took a differing stance, recognizing Diageo as the prior user and lawful proprietor of the ‘Captain’ mark in India, where the brand has been active since 2006. Notably, Diageo’s Indian operations reported sales exceeding USD 6.4 million in 2023.

The Court emphasized that the word ‘Captain’ had acquired a strong association with Diageo’s offerings and functioned as a key identifier of origin. It further ruled that the inclusion of the word ‘Blue’ did not sufficiently distinguish the new mark, particularly given the similarity in the product category, which could potentially mislead consumers into believing the product was affiliated with or a variant of Diageo’s.

The judgment also highlighted the absence of evidence showing genuine use or intent to use the ‘Captain Blue’ mark on the part of the respondent, whose application was submitted on a ‘proposed to be used’ basis.

Citing provisions under the Trade Marks Act, the court concluded that allowing the ‘Captain Blue’ mark to remain registered would amount to infringement of Diageo’s intellectual property rights. As a result, it directed the Registrar of Trade Marks to strike the ‘Captain Blue’ entry from its records.

This ruling underscores the importance of prior use and brand identity in trademark law, particularly within highly competitive sectors like alcoholic beverages.