Dominant Formative Protection: Refusal of Suffix Variants under Section 11 – Diageo v. Prachi Verma

Introduction

The Delhi High Court’s decision in Diageo Scotland Limited v. Prachi Verma & Anr. (dated April 16, 2025) reinforces the principle that a trademark owner’s family of marks built around a dominant formative enjoys exclusive protection against later marks that reproduce the same formative, even if a suffix or minor variation is added. Diageo Scotland Limited (“Appellant”) challenged the dismissal of its opposition to the registration of “CAPTAIN BLUE” by Prachi Verma (“Respondent No.1”), contending that the impugned mark was deceptively similar to its well‑known “CAPTAIN” and “CAPTAIN MORGAN” brands in Class 33 (alcoholic beverages). The Assistant Registrar had rejected the opposition, leading Diageo to invoke Section 91 of the Trade Marks Act, 1999.

Summary of the Judgment

The Court allowed Diageo’s appeal, set aside the Assistant Registrar’s order dated October 1, 2024, and directed removal of application No. 4398295 (“CAPTAIN BLUE”) from the Register. Key findings:

Diageo is the prior adopter and registered proprietor of “CAPTAIN” (Regn. No. 1485228) and “CAPTAIN MORGAN” (Regn. No. 708544) in Class 33, with extensive goodwill and consumer recognition in India since 2006.
The respondent’s application was filed on a “proposed to be used” basis, without any supporting evidence under Rule 46 or proof of bona fide adoption or use.
“CAPTAIN BLUE” wholly incorporates the dominant formative “CAPTAIN,” leading to a likelihood of confusion and false association with Diageo’s family of marks.
Reliance on non‑binding third‑party “CAPTAIN” registrations could not override Diageo’s exclusive rights.

Analysis

Precedents Cited

Vinita Gupta v. Amit Arora, 2022 SCC OnLine Del 324: Emphasized protection of prior registrations and market reputation in assessing similarity.
Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142: Held that adoption of a prior mark’s distinctive element, even with minor variation, amounts to deceptive similarity if confusion is likely.
Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73: Established that conceptual closeness and similarity in goods strengthen likelihood of confusion.

Legal Reasoning

The Court’s reasoning proceeded along these lines:

Prior Rights & Family of Marks: Diageo’s continuous use and registrations in India created statutory and common‑law rights over “CAPTAIN” formative marks. These rights extend across a family of marks sharing the same dominant element.
Deceptive Similarity under Section 11(1): Assessment focused on the dominant formative “CAPTAIN.” The suffix “BLUE” was held insufficient to distinguish “CAPTAIN BLUE” from Diageo’s marks, especially in Class 33 for identical goods.
Absence of Bona Fide Adoption or Use: Respondent No.1 failed to file any evidence under Rule 46 or demonstrate bona fide intent or actual use. Such omissions weigh heavily in opposition proceedings.
Third‑Party Registrations: The Assistant Registrar’s reliance on unrelated “CAPTAIN” marks (many withdrawn, refused or opposed by Diageo) was impermissible. Confidential settlements (e.g., with IFB Agro Industries) did not dilute Diageo’s rights.
Ex Parte Proceeding: Respondent No.1 remained unrepresented and did not file a reply, justifying ex parte treatment and dismissal of its claim to bona fide use.

Impact

This judgment has several important ramifications:

Reaffirms that the protection of a house mark’s dominant formative extends to all variants sharing that formative in identical or similar goods.
Underscores the necessity for applicants filing “proposed to be used” marks to submit evidence of intent, bona fide adoption, or preliminary use under Rule 46.
Discourages copycat filings that merely append generic suffixes to well‑known formative elements.
Alerts Trademark Registry officials to scrutinize third‑party registrations that an opponent has previously challenged or settled.

Complex Concepts Simplified

Dominant Formative: The core, distinctive part of a trademark (e.g., “CAPTAIN”) that gives it its unique identity.
Deceptive Similarity: A likelihood that the public will confuse one mark with another because of visual, phonetic, or conceptual closeness.
“Proposed to Be Used” Basis: An application filed before actual commercial use; such applicants must provide evidence of intent or bona fide adoption.
Rule 46, Trade Marks Rules: Requires documentary proof of use or intent to use where an opposer or applicant relies on its own mark in proceedings.
Ex Parte Proceeding: A decision rendered when one party (here, Respondent No.1) fails to participate or file a reply after due notice.

Conclusion

The Delhi High Court’s decision in Diageo v. Prachi Verma crystallizes the protection afforded to a trademark owner’s family of marks built around a dominant formative. Mere addition of a suffix such as “BLUE” cannot distinguish a new mark from an well‑established house mark when the goods are identical and there is no bona fide use evidence. Applicants must diligently prove intent or genuine use when filing on a “proposed to be used” basis. This ruling will guide future opposition and examination proceedings, deterring opportunistic registrations that threaten established trademark rights.