The Delhi High Court has restrained actor Sanjay Dutt-backed Cartel Bros from using the word 'Godfather' for its whisky during the pendency of a lawsuit by Devans Modern Breweries. Justice Tushar Rao Gedela observed that Devans Modern Breweries Ltd has been manufacturing beer under the mark 'Godfather' for the last 40 years and the material on record showed that the mark is exclusively associated with it alone. The judge said that even if Cartel Bros Pvt Ltd has no mala fide in adopting the word, it can obtain unfair advantage from the former's goodwill and affect the distinctive character or repute of the trademark. "Thus, on a cumulative and holistic appreciation of facts, prima facie, it appears that the plaintiff is entitled to an ad-interim injunction restraining the defendants from using the mark 'Godfather' or other forms like 'Godfather's' in respect of the product -- whisky, manufactured by the defendants during the pendency of the present suit," the court said in its interim order passed on June 22.
The court directed Cartel Bros to take down all the listings, advertisements, posts and other content bearing the 'Godfather' trademark in relation to its whisky or other alcoholic beverages from all websites, e-commerce platforms, mobile applications, social media platforms and other online or digital media. The plaintiff argued that it manufactures world-class alcoholic beverages under various popular brands, including 'Godfather' and 'Old Vat', and also holds a registered trademark for 'Godfather'. It claimed that the defendant dishonestly adopted and used 'Godfather' for its whisky to unfairly ride its enormous goodwill in the sector.
The defendant submitted that it has no intention to use 'Godfather' as a standalone mark and that it has revised its mark from 'The Glenwalk Blended Scotch Whisky' to 'The Glenwalk Godfather's by Sanjay Dutt'. The court, however, observed that 'Godfather' was still bold and prominent in the revised mark and an average consumer was likely to believe that the two products were associated with each other. "Though the defendant has very fairly attempted to downplay the said mark by using a subscript 'By Sanjay Dutt', yet the emphasis on the word 'Godfather's' does not get diluted and remains a prominent part when looked at from a general consumer's point of view," the court said. "It needs emphasis that the plaintiff's mark 'Godfather' has attained substantial reputation and immense goodwill in the market in the last forty years of such use. Thus, when a general consumer with average intelligence and imperfect recollection perceives the products of the defendant, even though the product may not be identical, he is likely to believe that the product is somehow associated with or emanates from the plaintiff," concluded the court.