LI Network
Published on: December 21, 2023 at 13:58 IST
The Madhya Pradesh High Court has recently ruled that a suit filed by the Registered Proprietor (RP) for the infringement of Geographical Indications (GI) tag against unauthorized users remains maintainable even without impleading Authorized Users.
The court’s decision came in response to an infringement suit filed by the Scotch Whisky Association, challenging an order from the Commercial Court that imposed conditions on the proceedings.
The Commercial Court had stipulated that the suit could only proceed if the “Authorized User” identified in Section 21 of the Geographical Indications of Goods (Registration and Protection) Act, 1999, was joined as a party.
However, the Madhya Pradesh High Court rejected this condition, asserting that the RP has an independent right to maintain the suit for infringement without the mandatory inclusion of Authorized Users.
The bench, consisting of Justice Sushrut Arvind Dharmadhikari and Justice Hirdesh, emphasized the principle of ubi jus ibi remedium, stating that if there is a right, there is a remedy.
The Court highlighted that the RP, being the originator of the GI tag, retains the right to file a restraint suit against any unauthorized user, irrespective of the presence of Authorized Users.
The Scotch Whisky Association had originally filed the suit against respondents, including J.K. Enterprises, alleging the manufacture and marketing of whisky not meeting the criteria of Scotch Whisky under the mark ‘London Pride.’
The Court framed key issues, including the validity of non-joinder as grounds for immediate rejection and the RP’s right to file a suit independently under Section 21.
In conclusion, the Madhya Pradesh High Court allowed the petitioner’s appeal, setting aside the order of the Commercial Court. This decision reinforces the RP’s ability to protect the GI tag against infringement without obligatory involvement of Authorized Users.
Case Title: Scotch Whisky Association v J.K. Enterprises
