The Scotch Whisky Association (SWA), a company incorporated in the UK won an appeal (Scotch Whisky Association v J.K. Enterprises & Ors) before an Appellate Bench of the High Court of Madhya Pradesh in Indore.
The appeal arose from an order passed by the Commercial Court in District Indore. The Commercial Court held that SWA’s suit for infringement of its geographical indication (GI) Scotch Whisky, against the defendant JK Enterprises (JKE), was maintainable only if it impleaded an ‘authorised user’ of the GI as a necessary party.
The concept of ‘authorised user’ is unique to the Indian GI law. It essentially refers to any person claiming to be the producer of the goods in respect of which a GI has been registered. The Geographical Indications of Goods (Registration & Protection) Act, 1999 (the GI Act) permits authorized users to register themselves with the GI Registry. They can even sue for infringement, among other rights.
JKE defended the appeal and argued that SWA was not entitled to sue independently for infringement under Section 21(1) of the GI Act without impleading an authorized user as a necessary party. Section 21 (1) reads as follows:
21. Rights conferred by registration.
(1) Subject to the other provisions of this Act, the registration of a geographical indication shall, if valid, give,-
(a) to 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;
(b) to the authorised user thereof the exclusive right to the use of the geographical indication in relation to the goods in respect of which the geographical indication is registered.
It was JKE’s argument that the ‘and’ in Section 21(1)(a) of the GI Act must be read conjunctively and not disjunctively. When done so, JKE argued, there would be a requirement to implead the authorized user along with the registered proprietor in a suit for infringement.
In examining this issue, the Court looked at India’s obligations under the WTO’s TRIPs Agreement. It noted that the interpretation of the provisions of the GI Act, enacted in pursuance of the obligations under the TRIPs Agreement, must be in tune with such obligations and such interpretation must be purposive. Thereafter, the Court reviewed the provisions of the GI Act to understand the role of the registered proprietor and the authorised user. The Court’s review indicated that there are various provisions under the GI Act where the registered proprietor can act in its own right, without involving the authorized user. Two such provisions cited by the Court pertain to renewal of the GI and seeking additional protection. The Court also referred to Section 68 of the GI Act which specifically lists certain proceedings where the authorised user must be impleaded. Based on these provisions, the Court concluded that the registered proprietor has an independent legal status and entitlement to relate itself to the GI.
Citing the principle of “ubi jus ibi remedium,” (if there is a right, there is a remedy,) the Court pointed out that the legislature could not have been presumed to have conferred exclusive rights on the authorized user to the exclusion of the registered proprietor, who is the originator of the GI registration. The Court thus concluded that the word ‘and’ used in Section 21(1)(a) of the GI Act must be treated as ‘or’, else it would lead to a situation where the status of a registered proprietor of a GI would be pushed below that of the authorised user.