LI Network
Published on: December 26, 2023 at 13:36 IST
The Madhya Pradesh High Court clarified that a Registered Proprietor (RP) can file a suit for infringement under Section 21(1) of the GI Act independently, without necessarily impleading the Authorized User (AU) as a party.
The bench, comprising Justices Sushrut Arvind Dharmadhikari and Hirdesh, emphasized that the existence of an AU does not negate the RP’s independent rights to register and protect the Geographical Indication (GI).
The Court held that the non-impleadment of AU in an infringement suit filed by RP cannot be grounds to reject the plaint under Order 7 Rule 11 of the Code of Civil Procedure (CPC).
The petitioner, a UK-based company representing 56 entities associated with Scotch Whisky production, was granted the status of Geographical Indication for Scotch Whisky in 2010, making it the RP.
The petitioner filed a suit seeking a restraint order against the defendants, who were marketing ‘London Pride’ whisky, preventing them from producing, bottling, selling, or marketing any non-Scotch Whisky under the label ‘London Pride’ or similar names.
The trial Court rejected the petitioner’s application under Order 7 Rule 11, stating that AU should be impleaded as per Section 21 of the GI Act.
The High Court addressed three key questions: the power of the civil court to direct impleadment under Order 7 Rule 11, the RP’s ability to file an independent suit for infringement under Section 21(1), and whether a cause of action had been disclosed under Order 7 Rule 11.
The Court ruled that Order 7 Rule 11 does not mandate the rejection of a plaint based on joinder/non-joinder and such inquiries can be made during later stages of the trial.
It emphasized that the RP and AU are separate entities, and the RP can independently file for infringement under Section 21(1).
The Court rejected the argument that AU is a necessary party for an infringement suit. Finally, it held that the plaint adequately disclosed a cause of action.
The High Court directed the trial court to proceed with the case in accordance with the law. The petition was allowed with no order as to costs.
Case Details: SCOTCH WHISKY ASSOCIATION THR. ITS AUTHORISED REPRESENTATIVE SUNIL MEHDIRATTA v. J.K. ENTERPRISES THR. ITS PARTNER MR. KARANBEER SINGH CHHABRA & OTHERS
