Specific Geographical Identifier Would Prevent Confusion: Delhi High Court Provides Both Chile & Peru Right To Prevent Third Parties From Using GI For Alcoholic Beverage ‘PISCO’
|The Delhi High Court said that IPAB failed to appreciate that there are documents establishing that both the countries, i.e., Chile and Peru are using PISCO and have parallel agreements for use of PISCO with various other countries.
The Delhi High Court has provided both Chile and Peru the right to prevent third parties from using the Geographical Indication (GI) for the alcoholic beverage ‘PISCO’.
An association of producers of the alcoholic beverage ‘Chilean PISCO’ in III and IV regions of Chile, preferred a Writ Petition challenging the Order of the Intellectual Property Appellate Board (IPAB) by which the GI Application of the Embassy of Peru in India for ‘PISCO’ was allowed.
A Single Bench of Justice Mini Pushkarna held, “This Court further rejects the submission raised on behalf of respondent no. 4 that by pleading a case of ‘homonymous GIs’, the petitioner has brought in a completely new argument. This is a wholly fallacious submission in view of the case set up by the petitioner in the writ petition as well as reference to Section 10 of GI Act pertaining to homonymous GIs, in the notice of opposition filed by the petitioner before the Registrar of Trade Marks & GI. The GI Registrar directed that the word ‘Peruvian’ be added as a condition for registration, in consonance with the express provision pertaining to homonymous GIs. Thus, recognizing the right of both Chile and Peru for GI PISCO, with specific geographical identifier, would ensure that there is no confusion between Chilean PISCO and Peruvian PISCO, at the same time providing both Chile and Peru the right to prevent third parties from using the GI PISCO.”
The Bench said that IPAB failed to appreciate that there are documents establishing that both the countries, i.e., Chile and Peru are using PISCO and have parallel agreements for use of PISCO with various other countries.
Advocate Shwetasree Majumder represented the Petitioner while Senior Advocate Sanjeev Sindhwani represented the Respondents.
Facts of the Case
By the impugned Order, the IPAB had set aside the Order of the Assistant Registrar of Trade Marks and GI, granting GI to the Respondent-Embassy of Peru as ‘Peruvian PISCO’. The Petitioner claimed similar rights over the GI PISCO for certain alcoholic beverages manufactured in Chile, in the same manner as claimed by the Respondent for its alcoholic beverage manufactured in Peru. Therefore, it filed a GI Application for ‘Chilean PISCO’ in 2020. It was claimed that the GI of the Respondent ought to be ‘Peruvian PISCO’, while the Petitioner ought to be granted GI for ‘Chilean PISCO’, as both are claiming rights/GI PISCO for certain alcoholic beverages manufactured in Chile and Peru respectively.
The Respondent had earlier filed an Application before the Registrar for grant of GI ‘PISCO’ in 2005 and the Petitioner filed a notice of opposition towards the same. The Registrar held that the documents established that both countries were using PISCO and, in some countries, they have parallel agreements for use of PISCO. Thus, the Application for registration of GI PISCO filed by the Respondent was allowed with a caveat by registering the same as ‘Peruvian PISCO’, to avoid any deception or confusion amongst the consumers. The Respondent filed an Appeal against this Order and the IPAB allowed the same, holding that its mark was entitled for registration of GI as ‘PISCO’, without the prefix ‘Peruvian’. This was under challenge before the High Court.
Reasoning
The High Court in view of the facts and circumstances of the case, observed, “It is to be noted that on the basis of the finding that both Chilean and Peruvian alcoholic beverages are identified as PISCO, the order dated 3rd July, 2009 passed by the GI Registry, contains a categorical finding that registering PISCO as per the application of respondent no. 4 herein would definitely cause confusion or deception during the course of trade among the consumers. This Court is in complete agreement with the aforesaid findings, in view of the detailed discussion hereinabove.”
The Court noted that the impugned Order passed by the IPAB does not address the central question of whether the Chilean goods/alcoholic beverages are identified as PISCO.
“The fact that the two beverages are qualitatively different, has no co relation with whether the alcoholic beverage from Chile, is also identified as PISCO. The impugned order wrongly refers to the alcoholic beverage from Chile as ‘Chilean Liquor’, without mentioning the name by which, said ‘Chilean Liquor’, is identified. The documents and pleadings on record clearly establish that the alcoholic beverage from Chile is identified and recognized as PISCO. Therefore, deception and confusion in terms of Section 9(a) and 9(g) of GI Act is bound to occur, if the product of respondent no. 4 is granted GI PISCO, without addition of ‘Peruvian’ as a geographic identification/indicator”, it added.
The Court was of the view that if the goods of the Petitioner are actually and in fact identified as ‘PISCO’, the GI PISCO would legitimately apply to such goods, as per Section 2(1)(e) of the GI Act.
“The petitioner has been able to establish on account of various documents on record, the identification and recognition of its products globally as PISCO, continuously, extensively and since a long time. It is further established that even PISCO from Peru, does not necessarily come from the place PISCO”, it further said.
The Court remarked that filing of a GI registration application for Chilean PISCO provides a valid cause of action for filing the Writ Petition. It added that it is not a case of “trans-national GIs”, but that of homonymous GIs.
“None of the averments made in the pleadings by the petitioner imply or suggest that the products/alcoholic beverages from the two countries are the same. … Thus, in view of the detailed discussion hereinabove, it is evident that the impugned order passed by the IPAB has erred in exclusively granting the rights over PISCO to respondent no. 4”, it also said.
Conclusion and Directions
The Court noted that the impugned Order has completely disregarded the fact that emerges from the various documents placed on record, that both Peru and Chile have shared history to the manufacture of the beverage PISCO.
“This Court is of the view that considering the fact that the alcoholic beverage in question from Chile is also recognized and identified, the world over as PISCO, grant of a GI for the word PISCO per se, exclusively to respondent no. 4, without specifying the GI of Peru, would be detrimental to the legal and legitimate commercial interest of producers of PISCO in Chile, and the same would also likely to deceive and cause confusion”, it observed.
Furthermore, the Court said that as per the current legislation in Peru, the Peruvian State is the official holder of the Appellation of Origin PISCO and hence, the Respondent i.e., the Embassy of Peru in India, which acts as an authority established under law by the Republic of Peru, is entitled to represent the interest of the Peruvian farmers and producers for registration of GI.
“The respondent no. 4 is clearly acting in the interest of the Peruvian State and the producers/manufacturers, for whose interest, the GI application in question, was filed. Therefore, this Court rejects the contention raised by the petitioner as regards the authority of respondent no. 4, to file the GI application”, it concluded.
The Court, therefore, directed that the GI granted to the Respondent shall be modified as ‘Peruvian PISCO’ and that the entry no. 43 in favour of the Respondent for PISCO in the Register of GIs shall be modified to include ‘Peruvian’ before PISCO. It also lifted the stay granted on the GI Application for GI ‘Chilean PISCO’ filed by the Petitioner.
Accordingly, the High Court disposed of the Petition and set aside the IPAB’s Order.
Cause Title- Asociacion De Productores De Pisco A.G. v. Union of India & Ors. (Neutral Citation: 2025:DHC:5339)
Appearance:
Petitioner: Advocates Shwetasree Majumder, Aditya Verma, Rohan Krishna Seth, Rigved Prasad, and Ritwik Marwaha.
Respondents: Senior Advocate Sanjeev Sindhwani, Advocates Vijay Joshi, Prashant Gupta, Jithin George, and Gaurav Sindhwani.