Delhi High Court: In a petition challenging the order dated 29-11-2018 passed by the Intellectual Property Appellate Board (IPAB), wherein the Board granted the Geographical Indication (‘GI’) tag, PISCO exclusively to the Embassy of Peru, the Single Judge Bench of Mini Pushkarna, J*, held that the since the alcoholic beverage PISCO is extensively produced by both Chile and Peru, the use of GI PISCO without geographical identifiers such as ‘Chilean’ and ‘Peruvian’ would be deceptive, misleading and cause confusion in the minds of the consumers.
Thus, the Court stated that recognizing rights of both Chile and Peru for GI PISCO, with specific geographical identifier, would ensure that there is no confusion between Chilean PISCO and Peruvian PISCO, at the same time providing both Chile and Peru the right to prevent third parties from using the GI PISCO.
Background
The petitioners are an association of producers of the alcoholic beverage ‘Chilean PISCO’ whereas Respondent 4 is the Embassy of Peru in India that had applied for GI PISCO for the alcoholic beverage, PISCO produced in Peru. The Registrar of Trade Marks and Geographical Indicators had passed the order for registration of GI ‘Peruvian PISCO’, in favour of Respondent 4, instead of PISCO after considering the long and continuous production of PISCO in Chile as well.
The order of the Assistant Registrar was reversed by the Intellectual Property Appellate Board (IPAB) wherein the IPAB had referred to the alcoholic beverage produced by Chile as ‘Chilean Liquor’ and premised its order on the basis that the adoption of PISCO by Chile was dishonest and a product of misappropriation. IPAB had accordingly granted GI PISCO to Respondent 4.
In the instant appeal, the Court decided on two primary questions:
- Whether the ‘Chilean Liquor’ as identified in the IPAB order is known/identified as PISCO?
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Whether PISCO is a homonymous GI?
Analysis, Law and Decision
On the issue of identification of the ‘Chilean Liquor’ as PISCO, the Court noted that various documents and records, including multiple Free Trade Agreements with several countries made it evident that the alcoholic beverage from Chile is also known as PISCO. The Court stated that considering the long-standing use of PISCO by Chile over a prolonged period of time and recognition of the alcoholic drink PISCO from Chile by various countries, it was established beyond doubt that the alcoholic beverage from Chile was recognised and called as PISCO.
The Court further observed that IPAB’s basis for grant of GI PISCO to Respondent 4 was premised on the alleged historically dishonest adoption of PISCO by Chile. However, the prohibition of registration of GI is governed by Section 9 of the Geographical Indications of Goods (Registration and Protection) Act, 1999 (GI Act) which does not refer to priority of use or dishonesty in obtaining the GI as a factor for prohibiting registration of GI. Section 9(g) of the GI Act merely stipulates that a GI, which although, literally true as to the territory, region or locality in which the goods originate, falsely represents to the person that the goods originate in another territory, origin or locality, shall not be registered as a GI.
The Court, therefore, held that the documents and pleadings on record clearly established that the alcoholic beverage from Chile is widely identified and recognised as PISCO. Therefore, deception and confusion in terms of Section 9 of the GI Act was bound to happen if the product of Respondent 4 is granted GI PISCO without the addition of ‘Peruvian’ as a geographical indicator.
The Court further noted that the definition of geographical indication under Section 2(e) of the GI Act stipulates an objective test of identification of goods with a geographical attribute. The relevant consideration would be whether the alcoholic beverage of Chile was identified as PISCO. This would be independent of the fact that the alcoholic beverage originating in Peru was also called PISCO. The only objective determination for the purposes of Section 2(1)(e) of the GI Act would be whether the alcoholic beverage in question from Chile is recognised and identified as PISCO.
On the issue of PISCO being a homonymous GI, the Court noted that the alcoholic beverage originating from both Peru and Chile were recognised by both parties as different and distinct from each other. The Court stated that homonymous GIs are indicators 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 GI bring about the existence of multiple GIs that are afforded rights and protections with co-existent status along with addition of auxiliary information/indicator, so as to obviate any confusion or potential of misleading.
In this context, the Court had referred to the homonymous GIs BANGLAR RASOGOLLA and ODISHA RASAGOLA that were both granted GI for a dish with the same name but with respective prefixes to distinguish the place of origin. The Court noted that the addition of the prefix was motivated by the desire to avoid any conflict or confusion and to recognise the particular geographical area of origin of the same dish. The use of prefixes Banglar and Odisha to the word Rasogolla/Rasagola is not misleading since the quality and characteristic of the Rasagolla/Rasagla originating from Bengal and Odisha are different.
Considering the same, the Court noted that the alcoholic beverage originating from Peru and Chile are different and distinct from each other and therefore concurrent use of homonymous GI without any specific geographical identifier would be misleading to the public.
Thus, the Court held that the IPAB had failed to consider that there were documents establishing that both countries, Peru and Chile had parallel agreements with other countries for use of PISCO and had erred in exclusively granting the rights over PISCO to Respondent 4.
Therefore, the Court noted that recognising the right of both Chile and Peru for GI PISCO, with specific geographical identifier would ensure there is no confusion between Chilean PISCO and Peruvian PISCO, at the same time providing both Chile and Peru the right to prevent third parties from using GI PISCO.
Accordingly, the GI granted to Respondent 4 was directed to be modified as ‘Peruvian PISCO’.
[Asociacion De Productores De PISCO v. Union of India, 2025 SCC OnLine Del 4774, decided on 7-7-2025]
Judgement authored by- Justice Mini Pushkarna
Advocates who appeared in this case :
For the Appellant: Shwetasree Majumder, Aditya Verma, Rohan Krishna Seth, Rigved Prasad, Ritwik Marwaha, Advocates
For the Respondent: Sanjeev Sindhwani (Senior Advocate), Prashant Gupta, Jithin George, Gaurav Sindhwani, Advocates
