The Delhi High Court has restrained Cartel Bros, a company backed by actor Sanjay Dutt, from manufacturing, marketing and selling whisky under the trademark “Godfather” during the pendency of a trademark infringement suit filed by Devans Modern Breweries.
The single-judge Bench of Justice Tushar Rao Gedela passed an interim injunction in favour of Devans Modern Breweries, holding that the plaintiff had established a prima facie case warranting protection of its trademark rights pending adjudication of the dispute.
The Court restrained Cartel Bros, along with its successors, assigns, partners, directors and all persons acting on its behalf, from manufacturing, bottling, marketing, selling, offering for sale, advertising, exporting or otherwise using the marks “Godfather”, “Godfather’s” or any deceptively similar mark, label, packaging, trade dress or representation in relation to whisky products until further orders.
The Court also directed the defendants to remove all advertisements, listings, promotional material, social media posts and other content bearing the impugned mark or any confusingly similar variation in relation to alcoholic beverages from all platforms.
The order was passed in a suit filed by Devans Modern Breweries, which claimed proprietorship over the Godfather trademark since 1984 in relation to beer and asserted that it also holds trademark registrations for whisky and rum. The company contended that the mark had acquired substantial goodwill, reputation and distinctiveness over four decades of continuous commercial use and had become exclusively associated with its products in the minds of consumers.
According to the plaintiff, Godfather was an arbitrary and inherently distinctive trademark entitled to a high degree of legal protection under trademark law. It argued that the use of an identical mark by Cartel Bros for whisky was likely to cause consumer confusion, deception and dilution of its proprietary rights.
Cartel Bros opposed the plea and submitted that it had modified its branding to use the expression “The Glenwalk Godfather’s by Sanjay Dutt” and did not intend to use the standalone mark “The Godfather”. The company further offered to withdraw its trademark application for the standalone mark if permitted to continue using the revised label.
The defendant also argued that Devans had not undertaken substantial commercial use of the “Godfather” trademark in relation to whisky in recent years and therefore could not claim exclusive rights over the mark for that product segment.
After hearing the submissions, the Court held that Devans had succeeded in establishing a prima facie case, noting that denial of interim protection could result in irreparable injury to the plaintiff’s trademark rights and goodwill. The High Court granted interim injunctive relief restraining the use of the disputed mark pending final adjudication of the suit.
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