Delhi High Court Blocks Use of 'Godfather' Trademark for Sanjay Dutt-Backed Whisky

The Delhi High Court has issued an interim injunction against Cartel Bros, a venture backed by actor Sanjay Dutt, effectively barring the company from utilizing the brand name ‘Godfather’ for its whisky products. This legal development follows a lawsuit filed by Devans Modern Breweries Ltd, which asserts its long-standing ownership and market reputation associated with the trademark.

Presiding over the case on June 22, Justice Tushar Rao Gedela noted that Devans Modern Breweries Ltd has successfully maintained its production of beer under the ‘Godfather’ label for four decades. The court found substantial evidence suggesting that the brand holds an exclusive association with the plaintiff, which remains a critical factor in protecting its intellectual property rights from potential infringement or market confusion.

Legal Battle Over 'Godfather' Trademark Rights

The court’s ruling emphasizes that even if a company adopts a mark without explicit malicious intent, it may still derive an unfair competitive advantage from established goodwill. By using the ‘Godfather’ name, the defendant risked damaging the distinctive character that the plaintiff has painstakingly built over the last forty years. Consequently, the court ordered Cartel Bros to remove all online listings, digital advertisements, and social media content featuring the contested trademark in relation to its alcoholic beverage offerings.

The plaintiff argued that its portfolio, which includes widely recognized brands such as ‘Godfather’ and ‘Old Vat’, has achieved global standards. They maintained that the defendant's attempt to use the name for whisky was a strategic move to capitalize on the existing popularity of their registered mark.

Impact of Court Decision on Branding

In response to the legal challenges, the defendant had previously attempted to modify its branding from ‘The Glenwalk Blended Scotch Whisky’ to ‘The Glenwalk Godfather’s by Sanjay Dutt’. However, the Delhi High Court observed that this revision did not sufficiently address the core issue. The term ‘Godfather’ remained prominent within the new branding, leading the court to conclude that an average consumer would likely still perceive a false association between the two different product lines.

Justice Tushar Rao Gedela noted that despite the inclusion of the subscript mentioning Sanjay Dutt, the emphasis on the ‘Godfather’ mark remains too significant to avoid confusion. For the average consumer with limited recollection, the similarity could create the impression that the newer whisky product originates from or is endorsed by the original manufacturer of the established ‘Godfather’ beer. The court concluded that until the matter is fully resolved, maintaining the status quo through this injunction is necessary to safeguard the integrity of the registered trademark.