Delhi High Court Explains Concept Of 'Homonymous GIs' In Dispute Between Chile & Peru Over Name Of Alcoholic Beverage 'PISCO'

The Delhi High Court has clarified that “homonymous GIs” are those geographical indications that are spelled and pronounced alike, but which designate the geographical origin of products stemming from different countries, places or regions and possess different characteristics from each other.“Homonymous” in literal terms means words which are spelled and pronounced the same but have different meanings.Thus, homonymous GIs are those that are spelled and pronounced the same but relate to products from different geographical locations.A classic example of homonymous GIs in India are 'Banglar Rasogolla' and 'Odisha Rasogolla'.This is different from 'trans-national' GIs where the same product is produced in different countries, which share regions that produce the goods under the same GI.Justice Mini Pushkarna added that in India, the Geographical Indications of Goods (Registration and Protection) Act, 1999 permits registration of homonymous GIs if the applicant shows that there are ways to differentiate between homonymous GIs, all producers of such product are treated fairly, and the consumers won't be confused or misled by the similar names.“The GI Act under Section 10, recognizes registration of homonymous GIs in India, if the applicant satisfies that after considering the practical conditions under which the homonymous indication in question will be differentiated from other homonymous indications, and the need to ensure equitable treatment of the producers of the goods concerned, and that the consumers of such goods will not be confused or mislead in consequence of such registration,” the bench observed.The Court was dealing with the GI claims of Peru and Chile based organisations in South America over 'PISCO' for certain alcoholic beverages.Chile had challenged an order of the Intellectual Property Appellate Board, allowing Peru's GI application for PISCO.Chile claimed that since both the countries have a shared history in the manufacture of the beverage and since products of both countries are known as PISCO, addition of a prefix is necessary to avoid confusion— Peruvian PISCO and Chilean PISCO.The Respondent on the other hand claimed that between the PISCO producing region in Peru and the alleged PISCO region in Chile, lies a huge desert and therefore, the soil, climatic, and other geographical conditions of Southern Peru and Central Chile, cannot have the same features, geographical and climatic conditions. Thus, it was argued that Chile's claim over the GI PISCO is fictitious.It was also contended that a prefix cannot be added to a GI, unlike a trademark and addition of any prefix, especially, a geographical name, as a source identifier, is contrary to the basic tenets of GI jurisprudence and leads to dilution of the GI.The High Court at the outset found that documents on record establish that both the countries are using the word PISCO for their alcoholic beverages— though it can't be ignored that PISCO from Chile is completely different and distinct from PISCO in Peru. Therefore, in the context of concurrent use of the homonymous GI, the Court held it would be misleading to the public as to the nature or quality of the two products, if the GI PISCO does not contain a further specific geographical identifier, in order to identify PISCO from Peru and Chile, respectively.The Court reiterated the example of Banglar Rasogolla and Odisha Rasogolla, where prefixes have been added to avoid confusion.In conclusion, the High Court modified the IPAB order to the extent of adding “Peruvian” prefix to the GI, to make it distinct from Chilean PISCO.Appearance: Ms. Shwetasree Majumder, Mr. Aditya Verma, Mr. Rohan Krishna Seth, Mr. Rigved Prasad, Mr. Ritwik Marwaha, Advocates for Petitioner; Mr. Vijay Joshi, Advocate for R-1 and R-2; Mr. Sanjeev Sindhwani, Sr. Adv. with Mr. Prashant Gupta, Mr. Jithin George, Mr. Gaurav Sindhwani, Advocates for R-4Case title: Asociacion De Productores De Pisco A.G v. Union of India & Ors.Case no.: W.P.(C)-IPD 17/2021Click here to read judgment

Delhi High Court Explains Concept Of 'Homonymous GIs' In Dispute Between Chile & Peru Over Name Of Alcoholic Beverage 'PISCO'

Kapil Dhyani

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