Scotch Whisky GI infringement case clarifies independent rights of registered owners following Madhya Pradesh High Court ruling

The Madhya Pradesh High Court has upheld the independent rights of the registered proprietor for a Scotch Whisky geographical indication (GI), rejecting the premise that the authorised user must be impleaded in order to proceed with an infringement suit (Scotch Whisky Association v JK Enterprises, High Court of Madhya Pradesh, 2023 SCC Online MP 5352, 18 December 2023).

Case background

The Scotch Whisky Association (SWA) is a UK-based company that comprises 56 entities involved in the trade of Scotch whisky in the United Kingdom – particularly in Scotland. On 5 January 2009, it applied for a GI registration for Scotch Whisky (application 151) in India, which was granted on 23 September 2010, making it the registered proprietor. Subsequently, the SWA filed a suit in the Indore Commercial District Court against JK Enterprises to restrain it from manufacturing and marketing whisky that was not Scotch whisky under any brand name, including London Pride, the device of the Union Jack or any other similar image.

JK Enterprises filed an application to reject the complaint on the ground of non-joinder of the GI’s authorised user as per Section 21 of the Geographical Indications of Goods (Registration and Protection) Act 1999 (the GI Act). On 28 October 2021, the district court agreed that the suit was only maintainable if the authorised user was impleaded as a necessary party.

The SWA filed a writ petition against the district court’s decision before the Madhya Pradesh High Court, assailing the order and pleading that as a registered proprietor, it has the independent right to maintain a suit for GI infringement without impleading the authorised user.

Interpreting the GI Act

The decision about whether the SWA was required to implead the authorised user to maintain its suit rested on the interpretation of the GI Act. The act defines the term ‘registered proprietors’ in Section 2(n) as “any association of persons or of producers or any organisation for the time being entered in the register as proprietor of the geographical indication”. Further, Section 21 states:

the registration of a geographical indication shall, if valid, give, … the registered proprietor of the geographical indication and the authorised user or users thereof the right to obtain relief in respect of infringement of the geographical indication in the manner provided by this Act.

The issue was whether the word “and” in Section 21(1) should be read conjunctively or disjunctively. The court had to determine whether the word specified that the registered proprietor and authorised users must bring an infringement suit together, or if it meant that the two could file suit independently from one another.

This legal question was a novel one – until now, Section 21 has not come under judicial scrutiny. In decoding the GI Act and accompanying Rules, the court found that a product can only become a GI upon the application of the registered proprietor. Moreover, the registered proprietor could – even in the absence of an authorised user – renew a GI, or apply for the grant of additional protection and to be informed of the addition of authorised users.

Thus, the registered proprietor can act independently of an authorised user for the purposes of obtaining or continuing a GI tag. While Section 68 of the GI Act specifically mandates that the authorised user should be impleaded along with the registered proprietor, this is only applicable to certain cases mentioned in the said provision. 

Key findings

The Madhya High Court held that the word “and” in Section 21(1)(a) must be read as ‘or’. Thus, the SWA – the registered proprietor – can indeed file a suit independently without impleading the authorised user. Therefore, the court rejected the district court’s decision to implead the authorised user in this case.

By clarifying these rights, the court has answered key questions about who can prosecute in suits filed for infringement of GI rights in India: both the registered proprietor and the authorised user can file suit independently, and there is no need for the former to implead the latter in order to maintain a suit.