Asociacion De Productores De Pisco A.G. v. Union of India & Ors.

Relevant Acts and provisions

Geographical Indications of Goods (Registration and Protection) Act, 1999

Section 10Section 11Section 2(1)(e)Section 9

Provisions considered: Sections 2(1)(e), 9, 10 and 11 of the Geographical Indications of Goods (Registration and Protection) Act, 1999.

Brief facts

An association of Chilean producers challenged an order of the Appellate Board that had set aside the Registrar's grant of a geographical indication qualified by a country prefix to a Peruvian respondent, and had instead directed registration of the unqualified name. The Registrar had earlier registered the prefixed indication after finding that both countries produced and used the term. The petitioner, which had meanwhile applied for a corresponding prefixed indication for its own country, contended that as both countries' products are known by the same name but are admittedly different, this was a case of homonymous geographical indications under Section 10 requiring a prefix to avoid confusion.

Issues before the Court

1. Is the name a homonymous geographical indication shared, in different senses, by two countries under Section 10?
2. Did the Appellate Board err in directing registration of the unqualified indication without a geographical prefix?
3. Are trade mark concepts of priority and dishonest adoption relevant under the Geographical Indications Act?

Court's findings

The Court held that a geographical indication, unlike a trade mark, is a community right tied to the geographical origin of goods rather than a private, assignable property right, so trade mark concepts such as priority of adoption, dishonest intention and misappropriation, on which the Appellate Board's order was founded, have no place in determining registrability; the relevant test is whether the goods are actually recognised in the relevant markets as originating from the claimed territory.

On the evidence, the Court found that the beverage produced in the petitioner's country has long been recognised internationally under the same name, and that both countries admit their respective products differ from each other, making the case one of homonymous indications under Section 10 rather than a shared, transnational indication.

The Court held that adding a geographical qualifier, as the Registrar had done, was consistent with the equitable object of Section 10 in allowing genuinely different products bearing the same name to coexist without causing consumer confusion.

Decision

Writ petition allowed; the Appellate Board's order was set aside and the Registrar's registration of the indication with the geographical prefix was restored.

Cases cited

• Tea Board, India v. ITC Limited, 2019 SCC OnLine Cal 1085

Authorities referred to in the decision. Please verify each citation in the judgment itself.

Keywords

Community Right Geographical Indication Homonymous GI Prior User Registration