The Delhi High Court has ordered the removal of the trademark ‘Captain Blue’ from the Trade Marks Registry. The decision came in a legal challenge filed by Diageo Scotland Limited, the producer of the well-known 'Captain Morgan' rum.
Diageo Scotland Limited is a part of the larger Diageo Group, which owns a wide portfolio of popular alcoholic beverage brands. Among its flagship products is the 'Captain Morgan' range, which includes Captain Morgan Gold, Captain Morgan White Rum, and Captain Morgan Dark Rum.
Diageo informed the Court that the ‘Captain’ brand has been in continuous and widespread use in India since 2006. In 2023 alone, the company recorded sales of approximately USD 6.48 million in the Indian market under the Captain Morgan label.
The legal issue began when Prachi Verma, the respondent in this case, submitted a trademark application for the name ‘Captain Blue’ under Class 33, which is used for alcoholic beverages. The application was filed on a ‘proposed to be used’ basis, meaning the product had not yet entered the market.
Diageo opposed the registration of ‘Captain Blue’ by arguing that the mark was deceptively similar to their own and was adopted without genuine intent. The company also highlighted the risk of public confusion, as customers might assume the two brands were related or part of the same product line.
However, the Assistant Registrar of Trade Marks dismissed Diageo's opposition. The Registrar held that when both marks were viewed as a whole, the term ‘Captain Blue’ appeared distinctive enough from Diageo’s trademarks.
Unhappy with this outcome, Diageo appealed the decision before the Delhi High Court.
While hearing the matter, Justice Saurabh Banerjee observed:
“Diageo is a prior user and registered proprietor of the ‘Captain’ trademark.”
The Court acknowledged that the ‘Captain’ mark has become a recognizable and source-identifying element of Diageo’s product range. It also noted the significant goodwill built by the company, both in India and globally.
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In examining the respondent’s trademark ‘Captain Blue’, the Court made the following observation:
“Merely adding the word ‘Blue’ for very similar goods is not enough to make the mark distinct.”
The judge noted that since both marks are used for alcoholic beverages, there was a high chance that the public would see ‘Captain Blue’ as a variant or extension of Captain Morgan, leading to confusion in the marketplace.
The Court also pointed out a key flaw in the respondent’s application: it was submitted on a ‘proposed to be used’ basis, and no proof was provided regarding its actual use, business plans, or any evidence of genuine intent behind adopting the name.
Justice Banerjee observed:
“The Assistant Registrar failed to take into account the lack of evidence supporting the respondent’s bona fide adoption.”
Based on these findings, the Court held that the registration of ‘Captain Blue’ was not valid and deserved to be cancelled.
In its final order, the Court stated:
“The registration granted to the impugned mark is liable to be set aside.”
Accordingly, the Court directed the Registrar of Trade Marks to remove ‘Captain Blue’ from the registry, ending the trademark dispute in favor of Diageo.
Case title: Diageo Scotland Limited vs. Prachi Verma & Anr. (C.A. (COMM.IPD-TM)7/2025)
