GI Act, 1999 | Registered Proprietor Can Sue For Infringement Of GI Independently From Authorised User: Madhya Pradesh High Court

The Madhya Pradesh High Court in a recent decision clarified that to file a suit for infringement under Section 21(1) of the GI Act, the Registered Proprietor (RP) need not implead the Authorised User (AU) as a necessary party.The bench comprising Justices Sushrut Arvind Dharmadhikari and Hirdesh, on December 18 held that the existence of AU does not exclude the RP of its independent rights to register and protect the Geographical Indication. Further, it was observed that non impleadment of AU in a suit filed by RP for infringement cannot be grounds to reject the plaint under Order 7 Rule 11 of CPC. It was held, that “Petitioner is the 'Bhagirathi' of the GI tag in India as is luminescent from the notification of January 2009. Therefore, the legislature could not have been presumed to have conferred exclusive rights on the AU to the exclusion of RP itself, the originator of the very existence of a right. On the principles of ubi jus ibi remedium, viz., if there is a right, there is a remedy, therefore, RP would also have a right to file a restraint suit for grant of injunction against any unauthorised user of GI tag”The petitioner, who is a company incorporated in the United Kingdom with its registered office in Scotland is an association of 56 distillers, producers, dealers, blenders, owners of proprietary brand or brands, brokers or exporters of Scotch Whisky, which is manufactured in the United Kingdom, especially Scotland.The petitioner was issued the status of Geographical Indication (GI) for Scotch Whisky on September 23, 2010, thus making the petitioner the Registered Proprietor (RP). The petitioner had filed in the Trial Court seeking a restraint order against the defendants or any of their agents from producing, bottling, selling, or marketing any Whisky that wasn't Scotch Whisky under the label 'London Pride' or any other similar names. Additionally, the prayer sought to restrain the defendants from engaging in any form of manufacturing, importing, exporting, stocking, or dealing with non-Scotch Whisky using the Union Jack or similar images. The suit had been filed through the authorized signatory with its registered office in India.The Defendants, on the other hand, are partners and are claimed to have been marketing and selling 'London Pride' whisky which essentially leads to the cause of action in the plaint. The Commercial Court Order dated 28.10.21, which was impugned before the present bench dealt with an application under Order 7 Rule 11, wherein the suit filed by the petitioner was held maintainable only after the impleadment of “Authorised User” (AU) in terms of S.21 of the GI of Goods (Registration and Protection) Act, 1999 (GI Act). Challenging the said order under Article 227, the petitioner argued firstly, that being the original applicant as RP, upon whose application the GI tag was granted to Scotch Whisky, the suit for infringement of GI only at their instance is clearly maintainable under Section 21 of the GI Act. Reliance was also placed on S.2(b)and (n), 6, 12,17 of GI Rules, 2002 to establish that the RP and AU were envisaged to be two different entities and the legislature intended to treat them separately and independently in their status.Secondly, before the trial court, no pleadings on non-maintainability due to non-impleadment of the AU were made by the defendants and thirdly, Order 7, Rule 11 does not specify the requirement for impleading any necessary/ proper party.The defendants, on the other hand, stressed that If an RP intends to file a lawsuit for infringement under Section 21, it can only do so if it piggybacks on AU. Without AU, the RP lacks its separate entitlement or basis to sue for the infringement of a GI tag. Further, it was argued that the word 'and' occurring under Section 21(1)(a) of the GI Act has to be read conjunctively and not disjunctively, requiring both AU and RP to be necessarily impleaded as parties in a suit for infringement of GI. lastly, it was argued that the trial court committed no errors in its order as such a direction of impleadment is inherent in the powers available to the Civil Court under Order 7 Rule 11 of the Code of Civil Procedure (CPC)The High Court was essentially tasked with three questions to consider: (1) Whether under Order 7 Rule 11 Civil Court hold the power to direct impleadment of a party as necessary/proper to the suit; (2) Whether the RP under S.21(1) of GI Act bring a suit for infringement independently, in its capacity and interpretation of the word “and” used; (3) Whether a cause of action has been disclosed under Order 7 Rule 11 for the complaint to be maintainable. Provisions Of Order 7 Rule 11 Do Not Require Joinder/Non-Joinder As A Ground For Rejection Of The Plaint: The bench held that Order 7 Rule 11 nowhere required the non-joinder/ joinder in its grounds for rejection of the plaint. The plaint could not be immediately rejected if the plaintiff failed to implead necessary parties, it was held.It was...

GI Act, 1999 | Registered Proprietor Can Sue For Infringement Of GI Independently From Authorised User: Madhya Pradesh High Court

Anmol Kaur Bawa

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