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Can a company avoid trademark infringement by adding a celebrity’s name and a different brand label to a rival’s established trademark?
In a 2026 dispute, the Delhi High Court examined whether a whisky brand using the word GODFATHER’S could continue despite the existing GODFATHER trademark associated with Devans Modern Breweries. The defendants argued that their additional branding, including the name of actor Sanjay Dutt, made the marks different.
The Court was not persuaded at the interim stage. It found that the word GODFATHER remained a prominent and essential feature of the defendants’ branding and granted an ad-interim injunction.
2. Meet the Parties
- Devans Modern Breweries Limited: An Indian alcoholic-beverage manufacturer that adopted the trademark GODFATHER for beer in 1984. It also held registrations for GODFATHER in Class 33, covering alcoholic beverages other than beer, including whisky and rum, from 2005.
- Cartel Bros Private Limited and another defendant: The defendants proposed to market whisky using branding that included GODFATHER’S, alongside other elements such as THE GLENWALK and BY SANJAY DUTT.
3. What Happened? (Facts)
Devans claimed that it had built substantial goodwill in the GODFATHER brand through more than four decades of use, particularly in the beer market.
The dispute arose after Devans discovered the defendants’ proposed whisky branding and trademark applications containing the word GODFATHER. The defendants had initially applied to register the standalone mark THE GODFATHER. After the Trade Marks Registry raised objections by citing Devans’ existing registrations, the defendants argued that adding the word THE created a different commercial impression.
During the proceedings, the defendants also proposed a revised composite mark:
A. THE GLENWALK GODFATHER’S BY SANJAY DUTT
They argued that the overall branding, including the prominent THE GLENWALK element and the celebrity association, distinguished their whisky from Devans’ beer.
Devans opposed this use. It argued that the defendants had retained GODFATHER, its established trademark, as a prominent element and had adopted it despite knowing about Devans’ earlier registrations.
The dispute raised another important question: could beer and whisky qualify as allied and cognate goods, even though they fall under different trademark classes?
4. The Big Legal Questions
- Can a company avoid trademark infringement by adding descriptive words, a different brand name or a celebrity endorsement to an existing registered mark?
- Does the dominant-feature test help courts assess composite marks without violating the anti-dissection rule?
- Can beer and whisky qualify as allied and cognate goods under trademark law despite belonging to different classes?
- Does a defendant’s prior knowledge of an existing trademark affect the assessment of honest adoption?
5. What Did the Court Decide?
On 22 June 2026, Justice Tushar Rao Gedela of the Delhi High Court granted Devans an ad-interim injunction.
The Court restrained the defendants from using GODFATHER, GODFATHER’S or other deceptively similar branding in relation to their whisky during the pendency of the suit. It also directed them to remove relevant online listings, advertisements and promotional content within the scope of the order. Indian Kanoon+1
The Court reached this prima facie conclusion after considering three major issues:
- The validity and enforceability of Devans’ trademark registrations.
- Whether beer and whisky were allied and cognate goods.
- Whether the defendants’ composite branding retained GODFATHER as its dominant and essential feature.
6. Why Did the Court Think So? (Reasoning)
A. Existing trademark registration mattered
The defendants questioned Devans’ use of GODFATHER for whisky and rum, particularly because the available sales documents related to earlier years.
However, the Court noted that Devans held registrations in Class 32 and Class 33. The defendants had filed a rectification petition against the Class 33 registration, but the Court explained that filing such a petition did not automatically invalidate an existing registration.
Under Sections 28 and 29 of the Trade Marks Act, 1999, a registered proprietor can enforce its statutory rights against infringement. The Court also considered invoices and a Chartered Accountant’s certificate that Devans had submitted to support its claim of actual sales of GODFATHER-branded rum and whisky between 2007 and 2013.
The Court treated those documents as prima facie evidence at the interim stage. It left their final evidentiary value for trial.
B. Beer and whisky were allied and cognate goods
The defendants argued that beer and whisky were different products. They relied on differences in price, alcohol content, storage, consumption and consumer purchasing habits.
The Court considered these distinctions but did not treat them as decisive.
Both products are alcoholic beverages. They also share important trade channels, including retail liquor shops, bars, pubs and restaurants. Further, both operate under related excise regulatory frameworks.
The Court therefore considered beer and whisky to be allied and cognate goods at the prima facie stage.
It explained that the nature, kind and intended use of goods matter when deciding whether they are related. Their placement in different trademark classes does not automatically make them unrelated.
C. The dominant feature remained GODFATHER
The defendants relied on the anti-dissection rule. They argued that courts must compare composite trademarks as a whole instead of isolating one word from the larger branding.
The Court accepted the importance of holistic comparison but rejected the defendants’ application of that principle to these facts.
It observed that GODFATHER remained prominent in the defendants’ original and revised branding. Even though the revised mark used a smaller font for GODFATHER’S and added THE GLENWALK and BY SANJAY DUTT, the word still attracted the consumer’s attention.
The Court also noted that Devans held a word-mark registration for GODFATHER. It found that the defendants’ composite mark retained the essential and prominent feature of that registered word mark.
D. Prior knowledge raised doubts about honest adoption
The defendants’ trademark application history also influenced the Court.
The Trade Marks Registry had cited Devans’ existing GODFATHER registration while examining the defendants’ application. In their reply dated 18 February 2026, the defendants argued that adding THE distinguished their mark from Devans’ trademark.
For the Court, this correspondence showed that the defendants knew about Devans’ registered rights before proceeding with the disputed branding. It therefore questioned whether their adoption was bona fide.
However, the Court made an additional point: even if the defendants had not acted with mala fide intent, Devans’ substantial goodwill could still cause consumers to associate the defendants’ whisky with the established GODFATHER brand.
7. The Golden Rule (Legal Principle)
A composite trademark must be assessed as a whole, but the presence of additional words or branding does not automatically defeat an infringement claim.
Courts may examine a mark’s dominant and essential features as part of that holistic assessment. Where a defendant retains the prominent source-identifying element of an existing registered mark, additional words or celebrity associations may not sufficiently distinguish the competing marks.
The relationship between the goods also matters. Products in different trademark classes may still qualify as allied and cognate goods depending on their nature, intended use and commercial connection.
Important qualification: These were prima facie findings made while deciding an application for interim relief. The Court did not finally determine infringement or bad faith after a full trial.
8. Why This Case Matters Today
The GODFATHER dispute illustrates two important principles of Indian trademark law.
First, a company cannot automatically avoid infringement merely by adding extra words, changing the font or using a celebrity association. Courts examine the overall impression of the competing marks and the prominence of their essential features.
Second, trademark classes do not provide an absolute boundary between related products. Goods falling under different classes may still qualify as allied and cognate goods when their nature, intended use and commercial connections support that conclusion.
The decision also shows how courts assess prior knowledge of a trademark when considering whether a defendant adopted a competing mark honestly.
9. Case Timeline
- 1984: Devans adopts GODFATHER for beer and begins building its brand presence.
- 2005: Devans obtains registrations for GODFATHER in Class 33 for alcoholic beverages other than beer, including whisky and rum.
- 19 January and 18 February 2026: The defendants file trademark applications involving GODFATHER.
- 18 February 2026: The defendants respond to the Registry’s objections, arguing that THE distinguishes their proposed mark.
- 12 March 2026: The defendants file a rectification petition challenging Devans’ Class 33 registration.
- 22 June 2026: The Delhi High Court grants an ad-interim injunction in favour of Devans.
10. Compare It With Another Landmark Case
Pernod Ricard India Private Limited v. Karanveer Singh Chhabra (2025)
In this case, the Supreme Court explained that courts must compare competing composite marks holistically. The mere presence of a common word does not automatically establish deceptive similarity.
It also clarified that the dominant-feature test serves as an analytical aid. A court cannot focus exclusively on one shared element and ignore the overall impression created by the marks.
The Delhi High Court considered this principle in the GODFATHER dispute. It found that the facts were different because GODFATHER remained a prominent and essential feature of the defendants’ branding.
11. Relevant Legal Provisions
| Provision | Relevance |
|---|---|
| Section 18, Trade Marks Act, 1999 | Application for registration of a trademark |
| Section 28 | Rights conferred by registration |
| Section 29(1) and 29(2) | Trademark infringement involving identical or similar marks and goods |
| Section 29(4) | Infringement involving a reputed registered mark used for dissimilar goods or services, subject to statutory conditions |
| Section 30 | Limits on the effect of registered trademark rights |
| Order XXXIX Rules 1 and 2, CPC | Temporary and interim injunctions |
12. Exam Memory Hack
GODFATHER = Dominant Feature + Cognate Goods
Remember two questions:
- Does the rival mark retain the essential feature of the registered trademark?
- Are the competing products commercially related, even if they belong to different trademark classes?
13. Possible Exam Questions
Short Answer: What is the dominant-feature test in trademark law?
Long Answer: Explain the relationship between the anti-dissection rule and the dominant-feature test with reference to Devans Modern Breweries Ltd. v. Cartel Bros Pvt. Ltd.
Problem-Based: A company launches whisky under a composite mark containing the dominant word of an existing beer trademark, adding a celebrity’s name and a separate brand label. Discuss the potential infringement issues under the Trade Marks Act, 1999.
14. Key Legal Terms
- Dominant Feature Test
- Anti-Dissection Rule
- Composite Trademark
- Allied and Cognate Goods
- Trademark Infringement
- Bad Faith Adoption
- Goodwill and Reputation
- Interim Injunction
15. TARAJU Takeaway
Adding a celebrity’s name or a different label does not automatically make a copied trademark distinctive. Courts look at the overall impression, the essential feature of the mark and the relationship between the competing goods.
A different package does not always mean a different trademark identity.
