Suit For Infringement Of Geographical Indication By Registered Proprietor Without Impleading Authorised Users Maintainable: Madhya Pradesh HC
The Madhya Pradesh High Court held that a suit filed by the Registered Proprietor (RP), against unauthorized users for infringement of Geographical Indications (GI) tag without impleading Authorized Users is maintainable.
The Scotch Whisky Association had filed an infringement suit but the Commercial Court issued a conditional order. The Commercial Court determined that the suit could only proceed if the "Authorised User" identified in Section 21 of the Geographical Indications of Goods (Registration and Protection) Act, 1999, was joined as a party.
“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 Bench comprising Justice Sushrut Arvind Dharmadhikari and Justice Hirdesh observed.
Senior Advocate Amit Agrawal appeared for the Petitioner and Advocate Ayush Jain appeared for the Respondent.
The Scotch Whisky Association, the petitioner, challenged the order passed by the Commercial Court. The order partially allowed the application under Order VII Rule 11, noting that the suit is maintainable only after the impleadment of the "Authorised User" as per Section 21 of the Act.
The Petitioners, as the Registered Proprietor (RP) of the Scotch Whisky Geographical Indication (GI), asserted an independent right to maintain the suit for infringement. The original suit sought a restraint order against Respondents, including J.K. Enterprises, for manufacturing and marketing whisky not meeting the criteria of Scotch Whisky under the mark 'London Pride.' The cause of action arises from the defendants marketing and selling 'London Pride' whisky.
The Court framed the following issues:
“A. Whether in an application under O7/R11, can the Civil Court hold non-joinder of a party to be fatal to the suit or direct for impleadment of any party as a necessary/proper party to the suit?
B. Whether under Section 21(1), RP can bring the suit for infringement in its own capacity or must join AU to make the suit maintainable. How should the word ‘and’ occurring under Section 21(1) be read and; conjunctively or disjunctively, as specifying two classes simpliciter, who can institute the suit for infringement of GI?
C. Whether the complaint disclose a cause of action under O7/R11 for it to be maintainable?”
In the context of the first issue, the Court noted that non-joinder/joinder of necessary parties is not a valid ground for the immediate rejection or return of the plaint by the Trial Court under Order VII Rule 11. The provision does not contemplate such grounds for rejection, and an inquiry into joinder/non-joinder is to be conducted during the subsequent stages of the trial, particularly during the framing of issues. The Trial Court, in an application under Order VII Rule 11, is not permitted to undertake an examination of the necessity of a joinder or the impact of a non-joinder on the maintainability of the suit.
In the context of the second issue, the Court highlighted the significance of the TRIPS Agreement, a global pact implemented in 1995 among World Trade Organization (WTO) member nations to establish minimum standards for Intellectual Property (IP) regulation. In compliance with TRIPS commitments, India, as a signatory, enacted the Geographical Indications (GI) Act in 1999. The Court observed the mandate of Section 68 for AU inclusion in specific proceedings and noted Rule 78's provision for added protection of specific goods.
The Court noted that despite Section 68's requirement for both RP and AU inclusion in specific disputes, the RP's inherent claim and entitlement to the GI tag remain undiminished. The Court noted that Section 21, titled "Rights conferred by registration," exclusively protects registered GIs, revealing the lack of protection for unregistered versions.
The Court observed that both RP and AU jointly share rights to seek relief for infringement and the exclusive use of the registered GI for their goods. Essentially, the Act recognizes the distinct legal existence of the RP and their fundamental right to protect and leverage the registered GI, irrespective of the presence of an Authorized User.
The Court noted that a plaint lacking cause of action can be dismissed under Order 7 Rule 11(a) but emphasized its use as a last resort to prevent unnecessary proceedings. Examining the plaint, the Bench observed that the plaint of the Petitioner had sufficient evidence for a cause of action. The petitioner, as a Registered Proprietor of "Scotch Whisky," has the right to sue under the GI Act against the respondent for potentially misleading labels.
In the context of the first issue, the Court held that the Trial Court cannot, under Order VII Rule 11, assess the necessity or impact of joining or not joining parties in determining whether a suit can proceed. This means non-joinder does not automatically invalidate the suit.
In the second issue, the Court held that as the originator of the GI tag, the Registered Proprietor (RP) has an independent right to file a restraint suit against unauthorized users, regardless of the presence of Authorized Users. This aligns with the legal principle ubi jus ibi remedium, where there is a right, there is a remedy.
Regarding the third issue, the Court held that the plaint provided sufficient evidence to support a cause of action. This means the plaintiff has established enough grounds to proceed with the lawsuit.
Accordingly, the Court allowed the Petitioner and set aside the impugned order.
Cause Title: Scotch Whisky Association v J.K. Enterprises
