Scotch Whisky Association & Ors.

- Passing off by misuse of a geographical indication.
- The Defendant manufactured and sold whisky under the name "Red Scot," which misrepresented the product as scotch whisky despite not being produced in Scotland.
- The Plaintiffs claimed this misled consumers and damaged the reputation and goodwill attached to Scotch whisky as a geographical indication.

30 Sept 2000: First legal notice sent
May 2001: second legal notice sent
2001 to 2003-Defendant temporarily stopped the sale of red scot Whisky
June 2003- plaintiff discovered resume in sale of red scot
April 2004-Summons issued; interim restraint on use of “Scot”;
Dec 2004-Defendant proceeded ex parte
August 2005 - Plaintiffs filed affidavit in evidence
April 2006- Judgment delivered

- Permanent injunction granted restraining the Defendant from: Using the word “Scot” or any deceptively similar word in relation to whisky.

- Damages awarded: ₹ 5,00,000

- Costs awarded: ₹ 3,10,000

- “Scot” / “Scotch” is a Geographical Indication identifying whisky originating in Scotland. The use of such terms by non-Scottish producers misleads consumers, constitutes unfair competition, amounts to passing off, even if the GI is unregistered.
- Section 20(2): Passing off actions preserved even for unregistered GIs; Section 67: Power to award damages
- Protection of foreign geographical indication through passing off even when GI is not registered in India.

Khoday Distilleries Limited

The Scotch Whisky Association and others

- An application filed by the respondents for the rectification of the registered trademark "Peter Scot" on the grounds that it was deceptively similar to "Scotch" and likely to cause confusion among consumers regarding the origin of the whisky

May 1968-appellant began manufacturing whisky "Peter Scot"; 1971-appellant applied for registration of mark; April 1986-respondents filed for an application of rectification of TM;

- Non application of Geographical Indication Act when the primary issue is concerning trademark registration and not GI registration

- It was the contention of the appellants that the Division bench of the Madras HC failed to consider Section 26 of the Geographical Indications of Goods Act, 1999.
- The SC held that, as per Section 26 (2) and 20(2) of the GI Act, 1999, the act had no application in the present case, as the dispute was concerning trademark registration.
- The SC set aside the order of rectification of TM based on the principles of acquiescence and waiver.

The Scotch Whisky Association and Anr.

Pravara Sahakar Shakar Karkhana Ltd.

September and October 1986- Plaintiff served Advocates notices on the Defendat objecting to misleading use of Scotch and related devices.
April 1987- filed suit in Bombay HC seeking injunctions and declaration for passing off.; Notice of motion filed for interim relief.
July 1991- Judgment delivered.

- The Court restrained the Defendant from advertising, offering for sale, distributing or selling any Indian whisky that Used the words “Scotch Whisky”, “Blended Scotch Whisky”, “Blended with Scotch Whisky”, “Blended with six year old Scotch”, etc or Used misleading labels or cartons (including the impugned Scottish drummer device and tartan elements) that would pass off the whisky as Scotch whisky or cause confusion regarding its origin

- Although decided before India’s GI Act (1999), this case laid important groundwork in Indian law for protecting geographical indications and related trade descriptions through traditional tort of passing off a principle later reinforced under TRIPS and the GI Act.
- The Court recognized that passing off goes beyond classic impersonation; it also protects the goodwill of a class of goods (here, Scotch whisky) and the protection extends to preventing injury to that goodwill by false descriptions.

The Scotch Whisky Association Thorought its Authorised Representative

Application number 151
Certificate number 148
Class 33 Alcoholic beverages except beer

- The Scotch Whisky Association challenged the commercial court order, which held that a suit for infringement of GI was only maintainable if the Authorised User was impleaded alongside the Registered Proprietor under Section 21 of the GI of Goods Act, 1999.

- January 2009 - GI Application no. 151 filed by the Petitioner; September 2010- Scotch Whisky attained GI Status in India; November 2011-Additional Protection granted under S.22(2) of the GI Act, 1999; October 2021 - Commercial Court required the impleadment of Authorised user; 2023- judgment of HC.

- The petition was allowed. The High Court ruled that the RP has an independent legal status and entitlement to sue for infringement under the GI Act.
- the word "and" in Section 21(1)(a) of the GI Act must be read disjunctively as "or" to ensure the Registered Proprietor and Authorized User have equal rights to sue.

- Non-joinder of a party is not a valid ground for the rejection of a plaint under Order VII Rule 11 of the CPC.
- Legislations enacted in pursuance of international treaties and conventions must receive a purposive
interpretation, in sync with the advancement and furtherance of the commitments made.

https://www.livelaw.in/pdf_upload/mp45432021finalorder18-dec-2023-512016.pdf

Intellectual Property Appellate Board, Chennai

- APEDA filed GI Application No. 145 (2008) seeking registration of “BASMATI”, The claimed geographical area covered the Indo-Gangetic Plains (Punjab, Haryana, HP, Uttarakhand, Delhi, parts of UP and J&K). Multiple stakeholders from Madhya Pradesh opposed the application, claiming inclusion of Madhya Pradesh in the Basmati GI area, claiming long-standing cultivation and similar agro-climatic conditions. Assistant Registrar directed APEDA to amend the GI application to include “uncovered areas”.

- November 2008 - GI Application for Basmati by APEAD under Class 30; March 2010- Examination report issued by the GI Registry; May 2010 – GI Application No. 145 published in GI Journal No. 34; December 2013 – Common order passed by Assistant Registrar of GI allowing oppositions for inclusion of uncovered areas; February 2016 – IPAB final decision

- The IPAB set aside the Assistant Registrar’s order directing inclusion of Madhya Pradesh.
- Held that mere cultivation or experimental growing is not sufficient for inclusion in a GI.
- IPAB found no evidence of historical reputation or public perception associating Basmati with Madhya Pradesh. Held that research, seed trials, or recent cultivation do not amount to historical commercial origin.

- IPAB reaffirmed that under Section 2(1)(e) of the GI Act, a GI may be protected based on reputation alone, even independent of quality or characteristics.
- APEDA was held competent to apply for GI registration as under Section 11 of the GI Act.

Madhya Kshetra Basmati Growers Association Samiti

Intellectual Property Appellate Board and Ors.

- Special Leave Petitions (SLPs) filed against the judgment of Madras High Court concerning the registration of "Basmati" as a Geographical Indication under the GI Act, 1999, specifically regarding the inclusion of 13 districts in Madhya Pradesh as Basmati-growing areas and the alleged "over-inclusion" of areas in other states by the Agricultural and Processed Food Products Export Development Authority (APEDA).

- November 2008 - GI Application for Basmati by APEAD under Class 30; May 2010- GI application was published for objections; April 2013- Peitioners filed application under section 12 of GI Act challenging the demarcation of states; 2016- the GI registration certification was issues to APEDA; March 2018- Assistant Registrar rejected the petitioners' case for the inclusion of the 13 Madhya Pradesh districts; The High Court of Madras passed the impugned judgment dismissing the writ petitions stating that mere cultivation or experimental growing is not sufficient for inclusion in a GI and no evidence of historical reputation or public perception associating Basmati with Madhya Pradesh.

- The Supreme Court set aside the judgment of the High Court. The matters were remanded back to the High Court for fresh consideration in accordance with the law, with a direction to dispose of the writ petitions expeditiously.
- The Supreme Court found that the High Court erred in not adjudicating the issue regarding the over-inclusion of areas in other states.

- The petitioners contended that APEDA’s demarcation of Basmati areas was "vague, overbroad, and unscientific"

Asociación De Productores De Pisco A.G

- The IPAB granted exclusive Geographical Indication (GI) registration for “PISCO” in favour of Peruvian producers, without any geographical qualifier.
- Chilean producers’ association (Asociación de Productores de Pisco A.G.) challenged this decision before the Delhi High Court seeking GI registration as Chilean PISCO on the grounds of denial of Chile's legitimate GI Claim, Risk of consumer deception, erroneous application of trademark principles and violation of GI Act and International Norms.

- September 2005 – Respondent-No.4 (Peruvian entity) filed GI application No. 43; September 2006 – Application advertised in the GI Journal.; January 2007 – Petitioner filed notice of opposition to GI application No. 43; uly 2009 – Registrar granted GI registration as “Peruvian PISCO” to respondent-No.4 instead of plain PISCO; November 2018 – IPAB allowed appeal by respondent-No.4 and set aside the Registrar’s order, granting GI for “PISCO”; June 2020 – HC granted interim stay against final orders on petitioner’s pending GI application for “Chilean PISCO”; June 2020 – Petitioner filed GI application No. 689 for “Chilean PISCO”

- The IPAB order was set aside which granted GI registration for “PISCO” simpliciter only to Peru.
- The Court held that PISCO is a homonymous geographical indication, as both Chile and Peru legitimately use the same name for different products originating in distinct geographical regions.
- ordered the Registrar to process Chile’s GI application for “Chilean PISCO” in accordance with law.

- the judgment clarified that GI protection is not based on priority or first use.
- concepts such as dishonest adoption are central to trademark law and do not apply to GI.

https://indiankanoon.org/doc/35667092/

Comité Interprofessionnel du Vin de Champagne (CIVC)

M/S Chinar Agro Fruit Products

- Defendant was using the name "Champagne" in relation to non-alcoholic sparkling drinks. The Defendant was served with a summons but failed to appear or file a written statement within the statutory period, resulting in ex parte proceedings.

- September 2008 – CHAMPAGNE was registered as a Geographical Indication (GI) in India under Class 33 (wine), valid for 10 years; November 2011 – Additional protection was afforded to the CHAMPAGNE GI by notification; 2015 – The plaintiff became aware that the defendant was selling non-alcoholic sparkling drinks under the name CHAMPAGNE; September 2017 – Ex-parte interim injunction was granted restraining the defendant from using CHAMPAGNE on products; later made absolute.

- The defendant’s use of the name CHAMPAGNE on non-alcoholic sparkling drinks constituted infringement of the plaintiff’s registered geographical indication under Section 22 of the GI Act, 1999.
- Granted a permanent injunction restraining the defendant and its representatives from manufacturing, selling, marketing, or otherwise dealing in any products under the name CHAMPAGNE or any expression suggesting origin from the Champagne region of France.
- Ordered to deliver all seized infringing goods and packaging for destruction

- application of Section 22 (2) and 22(3) of the GI Act, 1999, which prohibits the unauthorised usage of the registered GI, resulting in misleading.
- Section 67 applied - relief that includes injunctions for infringement.

https://www.casemine.com/judgement/in/5a06eed3ce686e7fcbb72446

Darjeeling Tea (Word and Logo)

- Tea Board of India, as the registered proprietor of the Darjeeling Geographical Indication (GI) for tea, filed a civil suit against ITC Ltd. (defendant) alleging misuse of the Darjeeling.
- Usage of “Darjeeling Lounge” at ITC infringed the registered GI rights and amounted to passing off/unfair competition by misleading consumers to associate with authentic Darjeeling tea

- 2004-05 – Darjeeling Tea obtained GI registration in India; 2010 – The Tea Board originally filed the civil suit against ITC Ltd. regarding the Darjeeling Lounge.

- The Geographical Indications Act, 1999, protects only goods bearing a GI and not services. The defendant’s use of Darjeeling in the name of a lounge (a service) did not amount to infringement under the GI Act.
- The claim was barred by limitation under Section 26(4) of the GI Act because the defendant’s use of the name predated the suit by more than the statutory period.
- There was no competition in goods/services between the Tea Board’s GI-protected tea and the defendant’s lounge that would mislead consumers.

- The judgment differentiates between certification trademarks and GI registrations: certification marks allow certifying origin/quality of goods, but do not grant broad proprietary rights over the term in all commercial uses.
- Actions relating to GI infringement are subject to specific limitation periods under Section 26(4) of the GI Act; delayed suits may be dismissed irrespective of merits.
- Passing off requires a likelihood of consumer confusion.

http://student.manupatra.com/Academic/Studentmodules/Judgments/MANU-WB-0277-2019.pdf

Payyannur Pavithra Ring Artisans & Development Society

Application Numbers 6 and 408
Certificate Number 144
Class 14 Handicrafts

Intellectual Property Appellate Board, Chennai

- Subhash Jewellery challenged the GI registration granted to the respondent Payyannur Pavithra Ring Artisans & Development Society for the Payyannur Pavithra Ring.
- Claimed that the Society did not legitimately represent the actual producers/artisans of the ring as required under the GI Act and had procedural and substantive deficiencies in its GI application, including a lack of proper evidence showing it genuinely represented the producers.

- Feb 2004 - The respondent society’s application for GI registration of Payyannur Pavithra Ring was filed; July 2009 – Registrar of GI dismissed the opposition and granted GI registration in favour of the respondent society; April 2010 – The Madras High Court dismissed the appellant’s writ petition against GI registration, leading to the appeal to the Board; November 2011 – The appellant pressed for stay before the IPAB; the Board instead directed publication of notices in local newspapers

- The Board set aside the GI registration granted to the Payyannur Pavithra Ring Artisans & Development Society. It concluded that the respondent society failed to prove that it represented the actual producers/artisans as defined under the GI Act.
- Key statutory requirements, including proper representation and supporting evidence of producers, were not satisfied as under Section 2(k), Section 11 and 13 of the GI Act.
- The matter was remanded to the Geographical Indications Registrar for fresh consideration in accordance with law,

- GI registration is producer-centric, not association-centric. Compliance with Sections 2(k), 11, and 13 is substantive, not merely formal.
- A GI cannot be granted unless the applicant clearly and convincingly represents the real traditional producers, supported by evidence and proper statutory scrutiny.

https://www.casemine.com/judgement/in/574990ccadd7b016e0f0496c

M/S Bikaji Foods Int. Ltd. ; Bikaner Bhujia Udyog Sangh

M/S Desai Brothers Limited & M/s Shree Ram Papad Private Limited

-The plaintiffs filed commercial suits under Section 16 and Section 22 of the GI Act, 1999, seeking injunctive relief against the use of the GI “Bikaneri Bhujia” by defendants on similar products and packaging; Alleged infringement of GI rights; and Passing off / unfair competition by deceptively similar packaging and branding for “Pitaara Bikaneri Bhujia” products.

- Renewal of GI till 2028 October.

- Defendants’ use of the term “Pitaara Bikaneri Bhujia” and its packaging could create confusion with the registered GI “Bikaneri Bhujia.
- Section 22(1) of the GI Act, infringement requires (a) use by an unauthorised user and (b) misleading consumers about origin or passing off.
- The Court appointed a Local Commissioner to inspect the defendants’ premises in Bikaner to gather evidence on the origin of products, manufacturing records, packaging, deceptive similarity, and sales details.

- Procedural order related to Geographical Indication for verification and gathering of evidence.

Prof. Adv. Ganesh S. Hingmire & Ors.

- Public Interest Litigation by six advocates, alleging luxury fashion brand PRADA has commercialised and used “toe ring sandals” deceptively similar to the traditional Kolhapuri Chappal without authorisation.

- May 2009 – Kolhapuri Chappal was registered as a Geographical Indication under the GI Act (valid through 2029); June 2025 – PRADA showcased its “toe ring sandals” resembling Kolhapuri Chappals at its Spring/Summer fashion show in Milan, Italy

- The High Court dismissed the PIL as not maintainable since the appropriate mechanism to enforce rights is through a suit filed by registered proprietors or authorised users.
- Did not demonstrate a genuine public interest that justified bypassing statutory civil remedies.
- Alleged similarity of products and infringement issues involve disputed factual questions that require evidence and cannot be resolved via a writ petition.

- Only those directly aggrieved with statutory rights (e.g., registered GI proprietors or authorised users) have locus standi to enforce the GI Act’s infringement provisions in the appropriate forum.

https://indiankanoon.org/doc/123371037/