The Delhi High Court on Monday restrained Sanjay Dutt-backed company Cartel Bros from using the "Godfather" trademark for their whisky.
Justice Tushar Rao Gedela allowed the interim injunction plea filed by Devans Modern Breweries.
“Accordingly, the defendants [Cartel Bros], their successors, assigns, partners, directors, and all others acting for and on its behalf are restrained from manufacturing, bottling, marketing, selling, offering for sale, advertising, exporting, using the mark “GODFATHER” or “GODFATHER’S” or any other mark, label, carton, packaging, trade dress or representation as part of their trademark in respect of the product - whisky manufactured by the defendants during the pendency of the present suit,” the Court ordered.
It also directed Cartel Bros to remove all listings, advertisements, posts and other content bearing the Godfather or any other deceptively similar mark in relation to alcoholic beverages from all platforms.
The order came in a suit filed by Devans, which claimed ownership of the “Godfather” trademark since 1984 for beer and registrations for whisky and rum. Devans argued that the mark has acquired substantial goodwill over four decades and is uniquely associated with its products.
It contended that “Godfather” is an arbitrary mark deserving strong protection and that Cartel Bros’ use of the mark for whisky was likely to cause consumer confusion.
However, Cartel Bros stated that it had revised the mark to “THE GLENWALK GODFATHER’S BY SANJAY DUTT” and that it has no intention to use the mark “THE GODFATHER”, standalone.
The company offered to withdraw its application for the standalone mark “The Godfather” if permitted to use the revised label. It also contended that Devans had not substantially used the “Godfather” mark for whisky in recent years.
After considering the case, the High Court ruled that Devans made a prima facie case for the grant of interim relief. Therefore, it passed the injunction order.
Senior Advocate J Sai Deepak with Advocates Afzsal B Khan, Suhrita Majumdar, Manosij Mukherjee, Sharad Besoya, Manya Jain, Purnima Vashishtha and Bal Krishan Singh appeared for Devans Modern Breweries.
Cartel Bros was represented through Senior Advocate Amit Sibal as well as Advocates Gaurav Bahl, Ajit N Makhijani, Rajat Jain, Amrita Dubey and Chayanika Das.
Advocates Prateek Goyal and Gaurav Kathuria appeared for another defendant.
[Read Order]