Devans Modern Breweries Limited v. Cartel Bros Private Limited & Anr.

High Court of Delhi | 22 June 2026 Case Number: CS(COMM) 346/2026, I.A. 9898/2026, I.A. 9911/2026 & I.A. 10797/2026 Bench: Hon’ble Mr. Justice Tushar Rao Gedela

BACKGROUND

The plaintiff, Devans Modern Breweries Limited, claims to have been founded in 1961 by industrialist Shri Dewan Gian Chand and to be one of the leading manufacturers of malt, spirit and beer in India, manufacturing alcoholic beverages under various brands including “GODFATHER,” “KOTSBERG,” “GIANCHAND,” “OLD VAT,” and “SIX FIELDS.” The plaintiff claims to have adopted the trademark “GODFATHER” in 1984 in connection with beer in Class 32 and to have used the mark continuously and extensively since then. The plaintiff also claims to hold trademark registrations for “GODFATHER” in Class 33 in connection with alcoholic beverages other than beer (including rum and whisky) since 2005, as well as registrations for “GODFATHER” in Class 32 in other jurisdictions including New Zealand, Canada, Malaysia, Singapore and the U.A.E. The plaintiff also claims ownership of copyright in the artistic work/label comprising the mark “GODFATHER” since 1998.

The plaintiff placed on record sales figures for the financial year 2024-25 of approximately ₹7,46,73,99,542 (₹746 crores) under the mark “GODFATHER,” with advertisement and sales promotion expenditure of approximately ₹4,23,34,378 for the same period. The plaintiff also placed on record numerous sale invoices for beer from 2007 to 2024, for rum from 2005 to 2025 and for whisky from 2005 to 2013, supported by a Chartered Accountant’s certificate and excise declarations, the earliest for beer and rum dating to 2004 and for whisky to 2005. The plaintiff stated that the total turnover of Indian Manufactured Foreign Liquor (“IMFL”) sold under the mark “GODFATHER” during the period FY 2006 to FY 2026 was approximately ₹18,09,55,648 (₹18 crores).

The plaintiff alleged that it came across a Facebook post by defendant No. 1, Cartel Bros Private Limited, announcing the imminent launch of a whisky under the plaintiff’s trademark “GODFATHER.” Upon further search of the Trade Marks E-register, the plaintiff discovered several trademark applications filed by the defendants in Class 33 incorporating “GODFATHER” as part of the applied-for mark. The plaintiff accordingly instituted the present suit, CS(COMM) 346/2026, for infringement and passing off, together with I.A. 8777/2026 under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (“CPC”), seeking an ad interim injunction against the defendants.

Defendant No. 1 had originally used the mark “THE GLENWALK BLENDED SCOTCH WHISKY” for its product, but during the course of the proceedings revised this to “THE GLENWALK GODFATHER’S BY SANJAY DUTT” (the “revised mark”), submitting that it had no intention to use “THE GODFATHER” standalone and was willing to withdraw its trademark application No. 7466428 seeking registration of “THE GODFATHER” as a word mark in Class 33, provided it was permitted to use the revised mark. The defendant had filed its trademark applications on 19.01.2026 and 18.02.2026, each on a “proposed to be used” basis and had been incorporated only in 2022. Defendant No. 1 had achieved sales revenue of approximately ₹212 crores in the three years since launching its primary brand “THE GLENWALK” in 2023.

The defendant’s reply to a Trade Marks Registry examination report (which had cited the plaintiff’s mark as a conflicting prior mark) had contended that the addition of the definite article “THE” before “GODFATHER” sufficiently distinguished the marks. The defendant also contended that upon becoming aware of the plaintiff’s registration, it had filed a rectification petition (filed on 12.03.2026) seeking cancellation of the plaintiff’s “GODFATHER” mark in Class 33, on the ground that the plaintiff had not used the mark in relation to whisky since at least 2013 and held no excise licence or label approval for whisky manufacture after 2007. The defendant contended that the plaintiff’s invoices for the period 2007-2013 were blank documents lacking reference to excise licence or label approval, that sales reflected therein were confined to minuscule quantities supplied to the CRPF/BSF within Jammu and Kashmir and that the plaintiff’s own website did not list “GODFATHER” whisky or rum among its current products, instead promoting “Devans Gianchand” and “Devans Old Vat Premium” as its whisky brands.

ISSUES FOR DETERMINATION

• The first issue before the Court was whether the plaintiff’s alleged non-use or limited and largely undocumented use, of the mark “GODFATHER” in relation to whisky and rum under Class 33 since at least 2013 disentitled the plaintiff from enforcing its registered rights in that mark against the defendants at the interim stage, particularly where the defendants had filed a rectification petition seeking cancellation of the mark on grounds including non-use.
• The second issue was whether beer (falling within Class 32) and whisky (falling within Class 33) are “allied and cognate” goods for the purposes of Section 29(4) of the Trade Marks Act, 1999, such that use of an identical or similar mark on whisky by the defendants, even though beer and whisky are not identical or “similar” goods within the meaning of Sections 29(1) and 29(2), could nonetheless constitute infringement of the plaintiff’s reputed mark.
• The third issue was whether the defendant’s revised composite mark “THE GLENWALK GODFATHER’S BY SANJAY DUTT” incorporating the word “GODFATHER’S” in smaller font alongside the dominant elements “THE GLENWALK” and the celebrity endorsement “BY SANJAY DUTT” was, when viewed as a whole and applying the anti-dissection rule, deceptively similar to the plaintiff’s registered word mark “GODFATHER,” or whether the addition of these other elements was sufficient to distinguish the marks and avoid infringement.
• The fourth issue was whether, applying the principles articulated by the Supreme Court in Pernod Ricard India Private Limited v. Karamveer Singh Chhabra, 2025 SCC OnLine SC 1701, there existed a likelihood of confusion among an average consumer with imperfect recollection as between the plaintiff’s products and the defendant’s products bearing the revised mark, having regard to differences in price, alcohol content, retail placement and target consumer base between beer and whisky.
• The fifth issue was whether, on a cumulative and holistic appreciation of the foregoing, the plaintiff had made out a prima facie case, with the balance of convenience in its favour, warranting grant of an ad interim injunction restraining the defendants from using the mark “GODFATHER” or “GODFATHER’S” in any form in relation to whisky during the pendency of the suit.

KEY HOLDINGS OF THE COURT

1. On the question of non-use, the Court held that the statutory scheme of the Trade Marks Act, 1999 confers exclusive rights upon a registered proprietor by virtue of registration under Section 18 read with Section 28 and that neither Section 18 nor Section 28 makes the exercise of such exclusive rights contingent upon continuous or extensive use of the registered mark. The Court held that mere non-use of a registered mark, absent a valid rectification or cancellation of that registration under the Act, does not disentitle a registered proprietor from suing for infringement. Relying on the Supreme Court’s decision in Gujarat Bottling Co. Ltd. v. Coca Cola Co., (1995) 5 SCC 545, the Court held that statutory rights conferred upon a registered proprietor enable that proprietor to sue for infringement irrespective of whether the mark is used. The Court noted that the plaintiff’s registrations for “GODFATHER” in both Class 32 and Class 33 remained valid and subsisting, that no entity (other than the defendant, who had filed its rectification petition only on 12.03.2026, after the present dispute had arisen) had ever challenged these registrations and that the mere filing of a rectification petition, unless and until tested and allowed in accordance with law, could not constitute a presumption against the validity of the registered mark. The Court further held that, notwithstanding this position on the law, the plaintiff had in any event placed on record invoices and a CA certificate demonstrating sales of rum and whisky under “GODFATHER” for the period 2007 to 2013 and that whether these documents possessed adequate probative value and the broader question of the extent and continuity of such use, were matters requiring evidence properly assessed at trial and not at the interim stage, where the Court could not undertake a “mini-trial.” On a prima facie basis, the Court held that the plaintiff had indeed used the mark “GODFATHER” in relation to whisky and rum and that the extent or period of such sales was not a relevant consideration for the purpose of a registered proprietor’s standing to sue at the interim stage.
2. On whether beer and whisky are “allied and cognate” goods, the Court held, on a prima facie basis, that they are. The Court reasoned that beer and whisky are both alcoholic beverages, share common trade channels and distribution outlets in India (being commonly available in the same retail shops, bars and restaurants) and are governed by the same excise regulatory framework across Indian states. The Court held that while there exists a substantial price differential between the two products and while whisky consumers may be regarded as forming a more discerning or elite consumer base, these factors relate to consumer perception and are not the correct metric for determining whether goods are allied and cognate; rather, the determining factors are the kind, nature and intended use of the goods. Since both products are intoxicants consumed by members of various social strata for similar purposes of relaxation and inebriation, differing essentially only in alcohol content, the Court found no material to displace the conclusion that they are allied and cognate goods. The Court extensively relied upon and extracted the governing principles from FDC Limited v. Docsuggest Healthcare Services Pvt. Ltd., 2017 SCC OnLine Del 6381 (itself drawing upon British Sugar Plc. v. James Robertson & Sons Ltd., [1996] R.P.C. 281 and Kerly’s Law of Trade Marks and Trade Names), which sets out the relevant factors for assessing similarity of goods/services namely respective uses, respective users, physical nature, trade channels, retail placement and degree of competition as well as Raj Kumar Sharma v. Sandeep Kumar, 2023 SCC OnLine Del 492 and the Court’s own earlier decision in Radico Khaitan Ltd. v. Devans Modern Breweries Ltd., 2019 SCC OnLine Del 7483 (a prior dispute involving the very same plaintiff), which had likewise found beer and whisky to be prima facie allied and cognate goods.
3. On the anti-dissection rule and deceptive similarity, the Court rejected the defendant’s contention that, because its revised mark was a composite mark comprising multiple elements (“THE GLENWALK,” “GODFATHER’S,” and “BY SANJAY DUTT”), the plaintiff’s claim of infringement based on the presence of “GODFATHER’S” within that composite mark was impermissible dissection. The Court held that although the defendant’s revised mark increased the font size of “THE GLENWALK” and reduced the font size of “GODFATHER’S,” the word “GODFATHER’S” nonetheless remained bold and visually prominent and continued to catch the eye of a general consumer; moreover, since the plaintiff’s mark is registered as a word mark, the relevant inquiry is whether the essential element, characteristic and feature of that word mark is present within the defendant’s composite mark and where it is, the anti-dissection rule does not operate to immunise the composite mark from a finding of infringement. The Court considered and applied the Supreme Court’s decision in Pernod Ricard India (supra), particularly paragraph 33, holding that while the mere presence of a shared or generic word within a composite mark does not by itself establish deceptive similarity and a holistic comparison of visual, phonetic, structural and conceptual elements is required, the “Dominant Feature Test” remains a valid analytical aid within that holistic comparison; the ultimate question is whether the mark, viewed as a whole, creates a likelihood of misleading the average consumer with imperfect recollection. Applying this standard, the Court found that “GODFATHER” was prominent in the defendant’s original mark and that “GODFATHER’S” remained a prominent and essential element even in the revised composite mark, such that the principle in Pernod Ricard and in Modi Woodspace Private Limited v. The Registrar of Trade Marks, 2026 SCC OnLine Del 1835 (also relied upon by the defendant) did not assist the defendant on the facts. The Court also noted, as a relevant circumstantial factor bearing on the defendant’s bona fides, that the defendant had, in its reply to the Trade Marks Registry’s examination report (which had cited the plaintiff’s mark), expressly sought to justify registrability of “THE GODFATHER” by arguing that the prefix “THE” created sufficient distinction demonstrating that the defendant was well aware of the plaintiff’s registered marks in Class 33 at the time it sought registration and proceeded to launch its product nonetheless, rendering its claimed bona fide adoption “doubtful.”
4. On the likelihood of confusion, the Court distinguished the UK Intellectual Property Office decision in the Caledonian case (relied upon extensively by the defendant), in which “CALEDONIAN” sought for whisky was found not to create a likelihood of confusion with “CALEDONIA” registered for beer, on the ground that the goods were found similar only to a “low degree” and there was no likelihood of confusion in the UK market. The Court held this decision to be distinguishable on the facts: in Caledonian, the opponent was not even registered in Class 33 for whisky, whereas in the present case the plaintiff held a subsisting Class 33 registration for “GODFATHER” and had placed on record invoices and a CA certificate evidencing actual sales of rum and whisky under that mark. The Court also noted that retail distribution channels in the UK (as found in Caledonian) were more clearly demarcated between spirits and beers than in India, where beer and whisky are commonly available together in the same bars, pubs and restaurants, heightening the likelihood of consumer association in the Indian market. The Court reiterated that, in its view, the correct metric for assessing whether goods are allied and cognate is not consumer perception of the products’ differing nature, price point or target demographic, but rather the kind, nature and intended use of the goods themselves. On this basis, the Court held that the prominent and dominant feature of the defendant’s mark “GODFATHER” being visually, structurally and phonetically identical or near-identical to the plaintiff’s registered word mark and given the plaintiff’s substantial reputation built over 40 years of use (evidenced by sales of ₹746 crores in FY 2024-25 for beer alone and significant advertising expenditure), a general consumer with average intelligence and imperfect recollection encountering the defendant’s whisky bearing “GODFATHER’S” would likely believe the product to be associated with or to emanate from the plaintiff, even though the specific products (beer and whisky) are not identical. The Court held that the ingredients of Section 29(4) of the Trade Marks Act namely use of an identical or similar mark on goods not similar to the registered goods, where the registered mark has a reputation in India and such use without due cause would take unfair advantage of or be detrimental to, the distinctive character or repute of the registered mark appeared to be satisfied.
5. The Court concluded, on a cumulative and holistic appreciation of the facts, that the plaintiff had made out a prima facie case for grant of an ad interim injunction restraining the defendants from using “GODFATHER” or “GODFATHER’S” (or any other deceptively similar form) in respect of whisky during the pendency of the suit. The Court accordingly allowed I.A. 8777/2026 (referred to in the operative order as the application under Order XXXIX Rules 1 and 2 CPC) and restrained the defendants, their successors, assigns, partners, directors and all others acting on their behalf from manufacturing, bottling, marketing, selling, offering for sale, advertising, exporting or using the mark “GODFATHER” or “GODFATHER’S,” or any other mark, label, carton, packaging, trade dress or representation incorporating these as part of their trademark, in respect of whisky, during the pendency of the suit. The defendants were further directed to forthwith take down all listings, advertisements, posts and other content bearing the plaintiff’s trademark “GODFATHER” or any deceptively similar mark in relation to whisky or other alcoholic beverages from all websites, e-commerce platforms, mobile applications, social media platforms and other online or digital media under their control and to issue all necessary take-down requests to third-party platforms where such content had been published. The application was allowed in these terms and disposed of accordingly, with the suit and connected applications listed for further proceedings before the Court on 23.09.2026 and before the Joint Registrar (Judicial) on 09.07.2026 for completion of service and pleadings.

STATUTORY PROVISIONS INVOLVED

Section 18 of the Trade Marks Act, 1999 governs the procedure for applying for registration of a trademark, providing that any person claiming to be the proprietor of a trademark used or proposed to be used by him may apply to the Registrar for registration, with the Registrar empowered under sub-section (4) to refuse, accept absolutely or accept subject to conditions, amendments, modifications or limitations. The Court relied on this provision, read with Section 28, to hold that registration itself and not necessarily continuous use is the foundation of a proprietor’s exclusive statutory rights.

Section 28 of the Trade Marks Act, 1999 provides that registration of a trademark confers upon the proprietor the exclusive right to use the trademark in relation to the goods or services for which it is registered and to obtain relief in respect of infringement, subject to any conditions or limitations attached to the registration. The Court held that this provision does not make the exercise of such exclusive rights contingent upon use of the mark and that mere non-use, absent a successful rectification or cancellation proceeding (which would fall within Section 28(3) read with other provisions of the Act, expressly noted by the Court as not applicable on the facts of this case), cannot disentitle a registered proprietor from enforcing its rights.

Section 29 of the Trade Marks Act, 1999 sets out the circumstances constituting infringement of a registered trademark. Sub-sections (1) and (2) address infringement through use of an identical or deceptively similar mark in relation to identical or similar goods or services. Sub-section (4), which the Court found centrally applicable on the facts, addresses infringement through use of a mark identical with or similar to a registered mark, in relation to goods or services which are not similar to those for which the mark is registered, where the registered mark has a reputation in India and such use, without due cause, takes unfair advantage of or is detrimental to the distinctive character or repute of the registered mark. The Court held that the conditions of Section 29(1) and (2) were “met to some extent” given the plaintiff’s Class 33 registration and use, but that the more directly applicable provision was Section 29(4), given the Court’s finding that beer and whisky, though not identical or strictly “similar” goods, are allied and cognate and that the plaintiff’s mark enjoys substantial reputation that the defendant’s use would take unfair advantage of or be detrimental to.

Section 2(1)(zb) of the Trade Marks Act, 1999 defines “trademark,” and Section 2(1)(h) defines “deceptively similar.” These provisions were invoked by the defendant in support of its contention that Sections 29(2)(a) and (c) did not apply because the rival marks were neither identical nor deceptively similar; the Court’s ultimate finding that the dominant element “GODFATHER”/”GODFATHER’S” was indeed deceptively similar to the plaintiff’s registered word mark effectively rejected this submission, at least at the prima facie stage.

Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 govern the grant of temporary injunctions, under which the plaintiff’s application (referred to in the judgment both as I.A. 8777/2026 in the opening paragraph and as the application disposed of in the concluding operative paragraphs) was filed and ultimately allowed.

REASONING OF THE COURT

The Court’s reasoning proceeded through five sequential analytical stages, broadly tracking the structure the Court itself adopted in addressing the issues “ad seriatim.”

On non-use, the Court’s reasoning was grounded in a straightforward textual reading of Sections 18 and 28 of the Trade Marks Act: since the Act expressly makes registration, not use, the trigger for the exclusive statutory rights conferred under Section 28, a defendant cannot defeat an infringement claim merely by alleging even with some supporting material that the registered proprietor has not used its mark extensively or recently. The proper procedural route for testing the continued validity of a registration on grounds of non-use is rectification or cancellation under the Act’s dedicated machinery and unless and until such a challenge succeeds, the registration must be treated as valid and enforceable. The Court was careful to note that the defendant’s rectification petition, filed only on 12.03.2026 (notably, after the present commercial dispute had already crystallised), remained pending and untested and that its mere filing could not operate as a self-executing presumption of invalidity. The Court supplemented this primarily legal conclusion with a factual observation: even setting aside the question of whether use is legally required, the plaintiff had in fact placed prima facie evidence of use (invoices and a CA certificate for 2007-2013) on record and the proper forum for testing the evidentiary weight, completeness and reliability of that material given the defendant’s serious challenges to its authenticity and adequacy was trial, not an interlocutory hearing, since assessing such disputed evidentiary questions in detail would amount to an impermissible “mini-trial” at the interim stage.

On the allied-and-cognate-goods question, the Court’s reasoning drew heavily on an established analytical framework developed in prior Delhi High Court jurisprudence (FDC Limited, Raj Kumar Sharma and significantly the Court’s own prior decision in Radico Khaitan, which had arisen between different parties but had already considered the very same question of whether beer and whisky are allied and cognate, with that earlier decision likewise reaching an affirmative prima facie conclusion). The Court extracted at length the multi-factor test from British Sugar Plc. as adopted into Indian jurisprudence via FDC Limited focusing on respective uses, users, physical nature, trade channels and the parties’ degree of competition and concluded that, applying these factors to the Indian market context (as opposed to a UK-specific factual matrix, addressed separately below), beer and whisky share sufficient commonality of nature, regulatory regime and trade channel to be regarded as allied and cognate. The Court was emphatic that price differential and a more “elite” or discerning consumer base for whisky, while relevant considerations in other contexts, do not negate this finding, since these are considerations bearing on the ultimate question of consumer confusion (addressed at a later analytical stage) rather than on the threshold, more abstract question of whether the underlying goods themselves are allied and cognate by reference to their kind, nature and intended use.

On the anti-dissection rule, the Court’s reasoning carefully balanced two competing principles: the well-established rule that composite marks must be assessed holistically rather than through artificial dissection (as reaffirmed in Pernod Ricard), against the equally well-established corollary drawn from the same body of jurisprudence that the “Dominant Feature Test” remains a valid and useful analytical tool within that holistic assessment and that a composite mark cannot escape a finding of infringement merely by surrounding an admittedly prominent and distinguishing element (here, “GODFATHER’S”) with additional elements, where that core element nonetheless retains visual and conceptual prominence sufficient to be perceived by an average consumer as the source-identifying feature. The Court’s close visual inspection of the defendant’s marks both the original and the “revised” version proposed mid-litigation led it to conclude that, notwithstanding font-size adjustments, “GODFATHER’S” remained bold and prominent in both versions, such that the holistic comparison still yielded a finding of deceptive similarity at the level of the composite mark as a whole, rather than merely at the level of an artificially isolated component. The Court treated the defendant’s own conduct before the Trade Marks Registry specifically its express acknowledgment, in response to an examination report citing the plaintiff’s mark, that the only point of distinction it could offer was the prefix “THE” as significant circumstantial evidence undermining any claim of independent, good-faith adoption, since it demonstrated contemporaneous awareness of the precise conflict now in issue before the Court.

On likelihood of confusion, the Court’s reasoning engaged directly and critically with the defendant’s principal foreign authority, the UK Caledonian decision, identifying two material factual distinctions that, in the Court’s assessment, rendered that decision’s conclusion inapplicable to the present Indian context: first, the absence of any subsisting Class 33 (whisky) registration for the opposing mark in that case, as against the plaintiff’s subsisting registration here; and second, the more pronounced separation between spirits and beer retail channels in the UK market as found in that decision, as against the Court’s own observation (treated as a matter within judicial notice) that Indian retail and hospitality outlets bars, pubs and restaurants routinely stock and serve both beer and whisky without comparable physical separation. Building on its own articulated metric that the relevant test for allied-and-cognate status (and, by extension, likelihood of confusion arising from that status combined with mark similarity) turns on the kind, nature and intended use of the goods rather than on the subjective sophistication of the purchasing consumer the Court concluded that an ordinary consumer with imperfect recollection, encountering “GODFATHER’S” whisky after forty years’ exposure to “GODFATHER” beer, would be likely to perceive an association between the two products’ commercial origin, even without mistaking one product for the other in a literal purchasing sense. This finding of likely association, combined with the established prominence of the plaintiff’s reputation, was held sufficient to satisfy the statutory ingredients of Section 29(4).

Having reached affirmative conclusions on each of the preceding analytical stages continued enforceability of the registration notwithstanding the non-use challenge, allied-and-cognate status of the goods, deceptive similarity of the dominant mark element even within the composite revised mark and likelihood of confusion/association sufficient to engage Section 29(4) the Court’s final conclusion, granting the ad interim injunction, followed as a natural cumulative consequence, the Court expressly characterising its determination as resting on a “cumulative and holistic appreciation” of these several strands rather than on any single decisive factor in isolation.

DOCTRINAL SIGNIFICANCE

This judgment makes a useful contribution to Indian trademark jurisprudence on three related and recurring themes in the alcoholic beverages sector: the relevance (or lack thereof) of non-use allegations to interim injunction applications pending formal rectification proceedings; the continuing vitality and proper application of the “allied and cognate goods” doctrine as between different categories of alcoholic beverages; and the application of the Supreme Court’s recently articulated guidance in Pernod Ricard India on the relationship between the anti-dissection rule and the Dominant Feature Test in cases involving composite marks.

On non-use, the judgment offers a clear and practically significant reaffirmation that a pending or even imminent rectification petition does not, by itself, weaken a registered proprietor’s standing to seek interim relief and that courts at the interlocutory stage will not conduct a detailed evidentiary inquiry into the adequacy or authenticity of historical use documentation where a bona fide and facially plausible case of use has been made out. This is a useful clarification for litigants in long-pending portfolios where marks may have seen reduced commercial activity in particular product categories over time, while remaining formally registered and unchallenged until rectification proceedings are actually instituted and concluded.

On allied and cognate goods, the judgment’s extension of this doctrine already well established in cross-sectoral contexts such as pharmaceuticals and healthcare services (as in FDC Limited) to the specific context of different categories of alcoholic beverages (beer versus whisky) within the same broader market and its express engagement with and distinguishing of contrary UK authority on this very question, represents a useful and India-specific contribution. The judgment’s emphasis that the correct touchstone is the “kind, nature and intended use” of the goods rather than price-point or target-consumer sophistication is a clarificatory principle likely to be cited in future disputes involving premium versus mass-market alcoholic beverage segments or other product categories exhibiting similarly wide price differentials within an otherwise allied product family.

The judgment’s treatment of the anti-dissection rule alongside the Dominant Feature Test, applying the Supreme Court’s very recent guidance in Pernod Ricard India, is particularly significant given the recency of that Supreme Court authority; this judgment represents an early and instructive application of that guidance to a composite mark dispute, illustrating how a court is expected to conduct the “holistic” comparison mandated by Pernod Ricard while still giving appropriate analytical weight to a dominant, source-identifying element embedded within a larger composite mark even one accompanied by, in this instance, a celebrity-endorsement element (“BY SANJAY DUTT”) that the defendant contended supplied an independent and distinguishing source identifier of its own.

The judgment also illustrates the evidentiary and tactical significance, in trademark litigation, of a defendant’s own contemporaneous submissions made before the Trade Marks Registry during prosecution of its own application here, the defendant’s reply to an examination report, in which it sought to distinguish its mark from the plaintiff’s solely on the basis of an added definite article, was treated by the Court as probative evidence undermining the defendant’s claimed bona fides, notwithstanding the defendant’s subsequent, litigation-stage offer to revise its mark further.

The judgment must be read as an interlocutory ruling delivered on a prima facie basis. The Court was careful, throughout, to note that the ultimate questions the evidentiary weight of the plaintiff’s historical use documentation, the outcome of the pending rectification petition and the final determination of infringement and passing off remain to be conclusively adjudicated at trial. The Court’s repeated characterisation of its findings as “prima facie” underscores that this judgment resolves only the question of interim relief and does not finally determine the rights of the parties.

Frequently Asked Questions:

1. What was the outcome of Devans Modern Breweries v. Cartel Bros?
   The Delhi High Court granted an ad interim injunction restraining Cartel Bros from using “GODFATHER” or “GODFATHER’S” on whisky, finding a prima facie case of infringement and passing off in favour of Devans Modern Breweries.
2. Are beer and whisky considered “allied and cognate” goods under Indian trademark law?
   Yes – the Court held that beer and whisky share common trade channels, regulatory regimes, and intended use as intoxicants, making them allied and cognate goods despite differing in price and alcohol content.
3. Does non-use of a registered trademark prevent the owner from suing for infringement?
   Not automatically – the Court held that under Sections 18 and 28 of the Trade Marks Act, 1999, registration alone confers exclusive rights, and mere allegations of non-use cannot defeat an infringement claim unless a rectification or cancellation petition actually succeeds.
4. What is the Dominant Feature Test in trademark law?
   It is an analytical tool used within the broader anti-dissection rule, asking whether a prominent, source-identifying element of a mark retains visual or conceptual dominance within a composite mark, even when surrounded by additional words or elements.
5. What is Section 29(4) of the Trade Marks Act, 1999?
   Section 29(4) protects registered marks with an established reputation in India against use on dissimilar goods where such use, without due cause, takes unfair advantage of or is detrimental to the mark’s distinctive character.

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