Diageo Scotland Limited vs. Prachi Verma and Anr.

Recently, the Delhi High Court set aside the Trade Mark Registry’s (“Registry”) order of dismissing Diageo Scotland Ltd.’s (“Appellant”) opposition against the application for the mark CAPTAIN BLUE.

As per the Appellant, it is the proprietor of the CAPTAIN family of marks since 2006 which are being used in relation to Class 33 goods, i.e., alcoholic beverages. The Appellant had filed an opposition against an application to register the mark CAPTAIN BLUE, in Class 33, which was filed by Prachi Verma (“Respondent”). The opposition was dismissed by the Registry on the ground that the mark CAPTAIN BLUE, when compared as a whole with the Appellant’s CAPTAIN family of marks, is distinctive. Further, the Registry also relied on the presence of various third-party CAPTAIN-formative marks on the Trade Marks Register. Aggrieved by the Registry’s decision, the Appellant filed an appeal at the Delhi High Court.

It was the Appellant’s case that the Registry’s order overlooked the prior statutory and common law rights of the Appellant in its CAPTAIN family of marks. Further, the Appellant submitted that the mark CAPTAIN BLUE incorporated the dominant and source identifying component of the Appellant’s CAPTAIN family of marks. On the other hand, the Respondent maintained the stand that the rival marks are dissimilar. 

Here, the court, acknowledged the Appellant’s prior rights in its CAPTAIN family of marks, including the marks CAPTAIN MORGAN GOLD and CAPTAIN MORGAN WHITE. The court was of the opinion that the mark CAPTAIN BLUE of the Respondent is bound to be associated as a variant of the Appellant’s CAPTAIN family of marks and the mere addition of the term BLUE did not add to its distinctiveness. The court also noted that the Respondent did not produce any evidence of actual use or commercial intent to use the said mark at the evidentiary stage of the opposition proceeding, thereby, not providing any commercial justification for the adoption of the mark. Lastly, the court submitted that the Respondent also failed to produce any evidence regarding the mark CAPTAIN being used in the market by other third-parties in relation to Class 33 goods. In light of this, the court directed the Registry to remove the Respondent’s application for the mark CAPTAIN BLUE from the register. 

[Diageo Scotland Limited vs. Prachi Verma and Anr., [C.A. (COMM. IPD-TM) 7/2025, judgement dated April 16, 2025]

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