ASOCIACION DE PRODUCTORES DE PISCO A.G. v. UNION OF INDIA & ORS.

In a landmark judgment clarifying the law on homonymous Geographical Indications (“GIs”), the High Court of Delhi recently adjudicated on the long-standing dispute between Chilean and Peruvian producers over the rights to the name PISCO. The petitioner, a Chilean association of Pisco producers challenged an Intellectual Property Appellate Board (“IPAB”) order that had granted a GI registration for PISCO to Peru without any geographical qualifier.

The central issue was whether The Geographical Indications of Goods (Registration and Protection) Act, 1999 permits the registration of homonymous GIs, which are indications that sound or spell alike but denote products from different geographical regions. The court’s analysis centered on the prohibition of deceptive GIs under Sections 9(a) and 9(g) of the Act, and the specific provisions for registering homonymous GIs under Section 10 of the Act.

The petitioner argued that as both Chile and Peru have a legitimate and historical claim to PISCO, granting an unqualified registration to Peru would be deceptive to consumers under Section 9(a) of the Act. They contended that the matter should be governed by Section 10 of the Act, requiring the use of identifiers (i.e., “Chilean Pisco” and “Peruvian Pisco”) to ensure equitable treatment and avoid confusion.

Peru, in response, argued for exclusive rights, contending that the Chilean product was an “illegitimate misappropriation” of the authentic Peruvian PISCO. They asserted that there was no geographical contiguity between the Pisco-producing regions in the two countries and that there was no scope for confusion as their spirit is sold simply as “Pisco” worldwide without any prefix, establishing it as the sole origin.

The court first distinguished the principles of GI law from trade mark law, noting that the IPAB had erroneously applied the trade mark concept of “prior use” to determine the GI’s origin. The court clarified that GIs are tied to the unique characteristics of a region, not necessarily to which country used the name first. It held that since both nations produce distinct versions of PISCO, granting a blanket registration to Peru would indeed fall foul of Section 9(a) of the Act as it would mislead consumers. The court ruled that the correct legal path was through Section 10 of the Act, which explicitly allows for the protection of homonymous GIs, citing the domestic example of “Banglar Rasogolla” and “Odisha Rasagola” as a precedent for allowing such co-existence with geographical qualifiers.

In conclusion, the court set aside the IPAB’s order. This judgment provides essential clarity on the treatment of homonymous GIs in India, affirming that the GI framework is robust enough to protect multiple legitimate geographical indicators for the same product, thereby ensuring fair treatment for all legitimate producers and preventing consumer deception.

Asociacion De Productores De Pisco A.G. v. Union Of India & Ors. W.P.(C)-IPD 17/2021, CM 139/2022 & CM 59/2023 

Read the judgement copy here