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Geographical Indications: RP Can File Suit in Independent Capacity

While hearing a miscellaneous petition, the Madhya Pradesh High Court held that both the registered proprietor and authorised user of a geographical indication were equally entitled to the ‘right to obtain relief’ in case of its infringement.[1]

The petitioner, a registered proprietor of the geographical indication, Scotch Whisky, instituted a suit before the Trial Court to prevent the defendants from selling Whisky, which was not Scotch Whisky under the mark, ‘London Pride’. When considering an application preferred by the defendants for rejection of the plaint, the Trial Court ordered that the authorised user had to be impleaded before proceeding with the suit in accordance with Section 21(1)(a) of the Geographical Indications of Goods (Registration and Protection) Act, 1999.

Aggrieved by the view adopted by the Trial Court, the petitioner filed the present petition before the Madhya Pradesh High Court, asserting that the infringement suit was maintainable in its independent capacity. On the other hand, the respondent called for a conjunctive reading of the word “and” in Section 21(1)(a), necessitating the impleadment of both the registered proprietor and the authorised user as necessary parties in the infringement suit.

Upon careful perusal of the provisions of the Act, the Court highlighted the crucial role of the registered proprietor and the absence of express provision, making it mandatory for authorised users to be impleaded along with the registered proprietor in case of disputes. In light of the provisions permitting both entities to file the application for registration, the Court determined that the registration of the GI would give “equal recognition & rights to the RP as well as AU of obtaining the ‘right to obtain relief’ in the event of infringement of GI by any person”. With respect to the wording used in Section 21(1)(a), the Court, in its order dated December 18, 2023, noted that a literal interpretation of the word “and” would diminish the status of the registered proprietor to below that of the authorised user and held that it had to be read as “or”.

Before setting aside the impugned order, the Court held that the non-joinder of the party was not a ground for rejection of the plaint under Order VII Rule 11 of the Civil Procedure Code, 1908, and the petitioner’s plaint did disclose a cause of action.

[1] Scotch Whisky Association v. JK Enterprises & Ors. (Misc. Petition No.4543 of 2021)