W.P.(C)-IPD 17/2021 Page 1 of 47

$~

* IN THE HIGH COURT OF DELHI AT NEW DELHI

+ W.P.(C)-IPD 17/2021, CM 139/2022 & CM 59/2023

ASOCIACION DE PRODUCTORES DE PISCO A.G. .....Petitioner

Through: Ms. Shwetasree Majumder, Mr.

Aditya Verma, Mr. Rohan Krishna

Seth, Mr. Rigved Prasad, Mr. Ritwik

Marwaha, Advocates

Mob: 9911167179

Email:

litigation@fiduslawchambers.com

versus

UNION OF INDIA & ORS. .....Respondents

Through: Mr. Vijay Joshi, Advocate for R-1

and R-2

Mob: 9873677817

Email:

advocatevijayjoshi@gmail.com

Mr. Sanjeev Sindhwani, Sr. Adv. with

Mr. Prashant Gupta, Mr. Jithin

George, Mr. Gaurav Sindhwani,

Advocates for R-4

Mob: 8130010262

Email: jitin@knspartners.com

CORAM:

HON'BLE MS. JUSTICE MINI PUSHKARNA

JUDGMENT

% 07.07.2025

MINI PUSHKARNA, J:

1. The present writ petition has been filed challenging the Order dated

29

th

November, 2018 (“impugned order”) passed by the Intellectual Property

Appellate Board (“IPAB”), by which the respondent no. 4‟s Geographical

Indication (“GI”) application bearing no. 43 for „PISCO‟, was allowed.

W.P.(C)-IPD 17/2021 Page 2 of 47

Further, by the impugned order, order dated 3

rd

July, 2009 passed by

respondent no. 2, i.e., Assistant Registrar of Trade Marks & GI, granting GI

to respondent no. 4 as „Peruvian PISCO‟, was set aside.

2. The petitioner is also claiming similar rights over the name/GI PISCO

for certain alcoholic beverages manufactured in Chile, in the same manner

as claimed by respondent no. 4 for its alcoholic beverage manufactured in

Peru. Therefore, the petitioner has filed a GI application for „Chilean

PISCO‟ on 3

rd

June, 2020, which has been allotted application no. 689. It is

the case of the petitioner that the GI of respondent no. 4 ought to be

„Peruvian PISCO‟, while the petitioner ought to be granted GI for „Chilean

PISCO‟, as both the petitioner and respondent no. 4 are claiming rights/GI

PISCO for certain alcoholic beverages manufactured in Chile and Peru,

respectively.

3. The respondent no. 4 had earlier filed an application before the

Registrar of Trade Marks & GI for grant of GI „PISCO‟ on 29

th

September,

2005 in respect of alcohol beverages in Class 33. Per contra, the petitioner

herein had filed a notice of opposition dated 17

th

January, 2007, towards the

same. By way of order dated 3

rd

July, 2009, the Registrar of Trade Marks &

GI held that the documents established that both the countries, i.e., Peru and

Chile, were using „PISCO‟, and in some countries they have parallel

agreements for use of PISCO. Thus, the application no. 43 for registration of

GI PISCO, filed by respondent no. 4 was allowed with a caveat by

registering the same as “Peruvian PISCO”, to avoid any deception or

confusion amongst the consumers.

4. Against the aforesaid order dated 3

rd

July, 2009, passed by the

Registrar of Trade Marks & GI, respondent no. 4 filed an appeal before the

W.P.(C)-IPD 17/2021 Page 3 of 47

IPAB, which came to be allowed vide the impugned order dated 29

th

November, 2018, thereby, holding that the mark of the respondent no. 4 was

entitled for registration of GI as „PISCO‟, without the prefix „Peruvian‟.

Thus, the present writ petition has been filed challenging the impugned

order passed by the IPAB.

5. It is to be noted that vide order dated 16

th

June, 2020, this Court had

passed an interim order, thereby, directing the Registrar of Trade Marks &

GI not to pass any final orders with respect to petitioner‟s GI application

bearing no. 689 for the GI, „Chilean PISCO‟. The said order was confirmed

by this Court vide order dated 22

nd

March, 2022, with an additional

observation that the GI granted to respondent no. 4 for „PISCO‟, shall be

subject to the outcome of the present writ petition.

Factual Matrix

6. Facts, as canvassed in the writ petition, are as follows:

6.1 Petitioner is an association of producers of the alcoholic beverage

Chilean PISCO in III and IV regions of Chile, which is located in the river

valley of Elqui, Limari, Huasco, Copiapo and Choapa. The producers of the

petitioner‟s association have been producing and marketing Chilean PISCO

for well over a century.

6.2 The production of Chilean PISCO has been carried out openly,

extensively and continuously. The historical geographic link between

PISCO and Chile has been recognized not only in the Encyclopedia

Britannica, but has also been acknowledged globally in atleast 18

International Free Trade Agreements between Chile and other countries

across the world.

6.3 Respondent no. 4 applied for the GI, „PISCO‟ bearing application no.

W.P.(C)-IPD 17/2021 Page 4 of 47

43 in Class 33. The said application was advertised in the Geographical

Indication Journal No. 13 dated 18

th

September, 2006. Accordingly, the

petitioner filed a Notice of Opposition dated 17

th

January, 2007, registered

as application no. 43.

6.4 Subsequently, respondent no. 4 filed its counter statement dated 16

th

March, 2007. Thereafter, the petitioner filed its evidence in support of the

opposition and respondent no. 4 filed its evidence in support of its GI

application.

6.5 The respondent no. 2, i.e., Registrar of Trade Marks & GI, after

hearing detailed arguments, passed an order dated 3

rd

July, 2009, thereby

registering GI „Peruvian PISCO‟ in favour of respondent no.4, instead of

„PISCO‟ as prayed by respondent no. 4.

6.6 Respondent no. 4, thereafter, filed an appeal before IPAB, challenging

the order dated 3

rd

July, 2009. By way of order dated 29

th

November, 2018,

the IPAB set aside the order passed by the Registrar of Trade Marks & GI,

and held that respondent no. 4 is entitled to the GI registration of „PISCO‟.

6.7 Petitioner filed the GI application bearing no. 689 for the GI „Chilean

PISCO‟ on 3

rd

June, 2020. Thereafter, the present writ petition came to be

filed.

Petitioner‘s Submissions

7. On behalf of the petitioner, the following submissions have been

made:

7.1 Peru and Chile have a shared history in the manufacture of beverage

PISCO in the Ica region of Peru, and Copiapo and Coquimbo regions of the

Republic of Chile. There are seven kinds of PISCO which are manufactured

across the regions, which are part of both Chile and Peru. PISCO has been

W.P.(C)-IPD 17/2021 Page 5 of 47

manufactured for centuries in regions, which were part of present-day Chile

and Peru. Definitive political boundaries came to be established only

between 1880 and 1940. However, the production of PISCO continued

between both countries.

7.2 The first document that proves the production of PISCO in Chile was

found in 1733, in a public inventory of Latorre Ranch located in the region

of Coquimbo, in which there were listed barrels of PISCO produced in that

farm. This is the oldest genuine document that proves the existence of

PISCO in Chile.

7.3 Costa Rica has recognized and granted GI Right in PISCO to the

petitioner, which is an equal co-claimant to the said right.

7.4 Multiple Free Trade Agreements between Republic of Chile and other

countries all over the world have recognized PISCO as a GI/Appellation of

Origin.

7.5 Chilean PISCO has received multiple accolades and awards by

various organizations.

7.6 For over a century, Chile has enacted legislation with respect to

PISCO.

7.7 It is apparent from the record that Chilean PISCO and Peruvian

PISCO, are two different types of alcohol beverages, which fact has not

been taken into account in granting blanket protection to respondent no. 4

for PISCO as a whole.

7.8 The impugned order failed to consider that the GI application for

PISCO was filed by the Embassy of Peru, which has no locus standi to file

such an application under the Geographical Indications of Goods

(Registration and Protection) Act, 1999 (“GI Act”). The GI Act under

W.P.(C)-IPD 17/2021 Page 6 of 47

Section 11, does not recognize a State/Nation or Country as an applicant, or

authorized user of GI. Therefore, respondent no. 4‟s application for PISCO

ought to be rejected at the outset, as the Embassy of Peru in India, is acting

on behalf of the nation of Peru, and not as an association of persons or as a

legal person.

7.9 The impugned order failed to consider that the respondent no. 4 has

made patently false and erroneous statements that their GI

application/petition before the World Intellectual Property Organization

(“WIPO”) was accepted by Czech Republic, France, Italy, Portugal, Hungry,

Slovakia and Bulgaria.

7.10 The application for registration of the said GI is in bad faith, as the

region which produces PISCO is shared between Republic of Chile and

Republic of Peru. Certain regions of Peruvian coastline and certain regions

of Chile, i.e., Region of Atacama and Coquimbo, both produce a spirit made

by the distillation of unadulterated grape wine stored in clay pitchers called

„Piscos‟, „Puchuchu‟ or „Pisquillos‟ in the Quechua language, which is the

root of the word PISCO.

7.11 The impugned order is contrary to and violates the legal right of the

petitioner under Sections 9 and 14 of the GI Act.

7.12 The impugned order has not provided any valid reasons to set aside

the clear finding of respondent no. 2 and the same is erroneously based on

principles of Trademark Law, such as date of use, dishonest adoption and

prior user, instead of principles that are required to be applied under the GI

Act. Therefore, the registration of GI PISCO in favour of respondent no. 4

by way of the impugned order, is bound to cause deception and confusion

amongst consumers.

W.P.(C)-IPD 17/2021 Page 7 of 47

7.13 The GI that has been granted to respondent no. 4 by virtue of the

impugned order is also contrary to the definition of „Geographical

Indication‟ in Section 2 (e) of the GI Act.

7.14 Chilean and Peruvian PISCO are different products which are

admitted by both parties. Therefore, the present is not a case of

„Transnational GIs‟ but that of „Homonymous GIs‟. Further, when products

of both countries are known by „PISCO‟, in such a case, addition of a prefix

is necessary to avoid confusion.

7.15 In view of Article 22.3 read with Article 22.4 of the Trade-Related

Aspects of Intellectual Property Rights (“TRIPS”) agreement, the GIs of

both the countries can co-exist with each other.

7.16 The impugned order failed to consider that Chilean PISCO has a

much higher production and marketing reach than Peruvian PISCO.

Therefore, granting exclusive rights to respondent no. 4, to use PISCO

would in all likelihood lead to confusion among consumers between the

Peruvian and Chilean variety.

7.17 There is no delay in filing the present writ petition as the filing of the

GI registration application for Chilean Pisco provides a valid cause of action

for the writ petition.

Respondent no. 4‘s Submissions

8. On behalf of respondent no. 4, the following submissions have been

made:

8.1 The petitioner has filed the present writ petition after an inordinate

delay of 18 months since the passing of the impugned order, and after

around one year from the issuance of the registration certificate in favour of

respondent no. 1. The petitioner has not offered any explanation for such a

W.P.(C)-IPD 17/2021 Page 8 of 47

delay. Pertinently, the petitioner has filed its GI application before the

Registrar of Trade Marks & GI seeking GI registration for „Chilean PISCO‟

on 3

rd

June, 2020, just a week before filing the present writ petition. The

present writ petition has been filed after an inexplicable delay, with an

oblique motive to secure registration of its own GI application, which cannot

be permitted.

8.2 The petitioner has categorically admitted that respondent no. 4 has a

right over the GI PISCO. The claim of the petitioner all along has been that

it has an ‗equal or shared right in GI PISCO‘.

8.3 The petitioner does not dispute that Peru has a right over the GI

PISCO. Rather, its sole objection has been that Chile has a shared right in

the GI PISCO. It is undisputed that there is no region called as PISCO

region in Chile. There is no geographical contiguity between the PISCO

production region in Peru, which is the southern part of Peru, and the alleged

PISCO production region in Chile, which is supposed to be in the central

part of Chile. Between the PISCO producing region in Peru and the alleged

PISCO region in Chile, lies a huge desert running into several hundred of

miles, called Atacama Desert. Therefore, the soil, climatic, and other

geographical conditions of Southern Peru and Central Chile, cannot have the

same features, geographical and climatic conditions. Thus, the petitioner‟s

entire claim of having any right whatsoever over the GI PISCO, is fictitious

and patently illegal.

8.4 Petitioner has consistently taken a stand before all forums that PISCO

is a GI. However, the petitioner has taken a frivolous plea that PISCO does

not fulfill the requirements of a GI under Section 2 (1)(e) of the GI Act.

Such an assertion is contradictory to the petitioner‟s own pleading, where it

W.P.(C)-IPD 17/2021 Page 9 of 47

has repeatedly admitted that PISCO is a GI and the petitioner is, therefore,

estopped from challenging the very essence of the GI and stating that PISCO

does not qualify as a GI under Section 2 (1)(e) of the GI Act.

8.5 The Registrar of Trade Marks & GI in its order dated 3

rd

July, 2009,

has clearly stated that it is undisputed that PISCO is an established GI in the

country of Peru. The petitioner has not challenged the said order passed by

the Registrar of Trade Marks & GI, therefore, the said finding has attained

finality.

8.6 The petitioner has categorically admitted before this Court that the

PISCO produced in Peru is different from the Chilean alcoholic beverage,

falsely claimed to be PISCO. The hallmark of a product branded as a GI is

its consistent quality. If the petitioner‟s claim of „common PISCO region‟ is

to be believed, then the final product in the alleged „shared PISCO region‟

would be identical. Instead, the petitioner itself admits that the two products

are different, and that even the production process of the two products, are

different.

8.7 The petitioner has miserably failed to evidence that there exists any

likelihood of confusion by the registration of PISCO as a GI in favour of

respondent no. 4. In fact, the GI „PISCO‟ is registered in the name of

respondent no. 4, in several parts of the world. Spirits from Peru are being

sold as PISCO in several countries worldwide, without any confusion or

deception whatsoever.

8.8 Petitioner has not even alleged that the Indian consumers and trade

identify two kinds of PISCO – one from Peru and another from Chile, and

that these are known as Peruvian PISCO and Chilean PISCO. The petitioner

had first opposed the registration of GI PISCO in favour of respondent no. 4,

W.P.(C)-IPD 17/2021 Page 10 of 47

in the year 2007, when it had neither applied for the registration of PISCO,

nor its products were sold, or had any reputation within the territory of India.

Thus, the petitioner‟s claim of any likelihood of confusion under Section

9(a) of the GI Act, is therefore, completely misplaced and devoid of any

merits.

8.9 A prefix cannot be added to a GI, unlike a trademark. It is an admitted

case that PISCO is a GI. The Registrar of Trade Marks & GI by its order

dated 3

rd

July, 2009 fell in grave error by adding a prefix, i.e., Peruvian to

PISCO. The IPAB has rightly set aside the order of the Registrar, which has

erroneously granted a registration of Peruvian PISCO to respondent no. 4,

instead of granting GI PISCO, as applied for by respondent no. 4.

8.10 Addition of any prefix, especially, a geographical name, as a source

identifier, is contrary to the basic tenets of GI jurisprudence and leads to

dilution of the GI.

8.11 Petitioner‟s shared claim over the GI PISCO is nothing, but an

imaginary, fanciful and illegitimate misappropriation of the Peruvian drink,

PISCO. Chile‟s illegitimate claims to PISCO find its beginnings in the late

1800‟s during the war between the Chile and Peru from 1879 – 1883. It was

during this period that the Chilean troops which had invaded Peru, became

aware of the famous drink PISCO. At the conclusion of the war, the

department of Tacna, located in Peru, was kept by Chile as a captive

province till 1929, when it returned to Peru. During this period, the

production of PISCO in Tacna was stopped, only to resume in 1929. To

make an assumption that because of „de-facto‟ possession of a Peruvian

province by Chile between 1883 to 1929, the PISCO region can be extended

geographically from Peru to Chile, would be preposterous.

W.P.(C)-IPD 17/2021 Page 11 of 47

8.12 It was thereafter in the 1930‟s, when Peru sought to regain its exports

of PISCO to United States of America (“USA”), which had been hampered

due to the war, that Peru came to know that there were products entering the

USA market which were not the original PISCO. The Chilean producers

were sending their spirit from Chile to PISCO, the port town in Peru, in

order for it to be exported from said port to USA. However, Chile‟s said

efforts were outrightly rejected. In 1935, the US authorities approved a

specific regulation named, „Regulations Relating to False Advertising and

Misbranding of Distilled Spirits‟, which stated that geographical names shall

not be applied to distilled spirits produced in any other place, than the

particular place or region indicated in the name.

8.13 With a view to circumvent the aforementioned regulation passed by

the USA, a Chilean congressman from the Elqui region, by the name of

Gonzalez Videla, who later served as the president of the Republic of Chile,

promoted a law in the Chilean Congress, in order to change the name of a

city from „La Union‟ to „PISCO Elqui‟, in 1936. The said law simply reads

as, „The town of La Union in the Department of Elqui will be called from

now on PISCO Elqui‟.

8.14 The petitioner‟s claim over the GI PISCO has been tainted with

dishonesty since inception. The Republic of Chile has resorted to despicable

measures to illegally benefit from the tremendous repute of PISCO, an

exclusively Peruvian drink, including, artificially renaming a Chilean city by

the name of „La Union‟ to „PISCO Elqui‟. Chile has sought to

misappropriate and usurp the GI PISCO, as it cannot have any claim

whatsoever in the GI PISCO, as there is no cultural, geographical or

historical link between the word PISCO and Chile.

W.P.(C)-IPD 17/2021 Page 12 of 47

8.15 It is possible that the region of a GI extends to more than one country,

as is the case with trans-national GI‟s. Subject to both the countries

producing identical product with consistent quality, both the countries could

be permitted to use the same GI name. However, in the present case, the

petitioner itself has admitted the two products to be different.

8.16 The petitioner has sought to set up a case of trans-national GI‟s, i.e.,

those GI‟s which are shared by more than one country. However, the

petitioner has failed to establish a case of trans-national GI. The respondent

no. 4 has relied upon various maps of Chile and Peru, in furtherance of the

submission that there is no shared region between the Republic of Chile and

Republic of Peru, which produces the alcoholic beverage PISCO.

8.17 Having failed to establish a case of trans-national GI, the petitioner

has now for the first time in the rejoinder, set up a case of homonymous GI.

Section 10 of the GI Act, which deals with homonymous GI‟s, is a provision

based in equity, which enables two countries to use identical GI names in

certain circumstances. The premise of the said Section is based on honesty.

However, Chile‟s conduct with regard to the GI PISCO has been far from

honest or incidental. Thus, the petitioner is not entitled to allege at this

belated stage, that the GI PISCO is homonymous.

8.18 As is evident from the evidence filed by respondent no. 4, the

petitioner is trying to usurp the name of PISCO. Moreover, since inception

of the present dispute, the petitioner‟s claim has been that of a shared region

known as „PISCO region‟. Thus, the claim of homonymous GI now set up

by the petitioner, is merely an afterthought.

8.19 Respondent no. 4 has relied upon maps to show that total distance

between Tacna in Peru and Copiapo in Chile, is 1,031.07 Kilometers, to

W.P.(C)-IPD 17/2021 Page 13 of 47

submit that the climatic conditions, temperature etc. in the said regions in

the two countries, are completely different. Thus, there is no shared region

or trans-national GI, as claimed by the petitioner.

8.20 The name PISCO cannot be identified as Chilean or Peruvian, as

admittedly the alcoholic beverage produced by both the countries, are totally

different in its elaboration, techniques and quality. Hence, PISCO prepared

in Peru cannot be compared under any circumstances to the Chilean

alcoholic beverage, which has been misappropriated as PISCO by Chile.

8.21 PISCO is a GI of Peruvian origin. Presently, PISCO is registered as an

Appellation of Origin from Peru in 20 countries across the world. On 16

th

February, 2005, Peru adhered to the Lisbon Agreement relating to the

Protection of Appellations of Origin and its International Registration, and at

present, 18 countries fully recognize PISCO as an Appellation of Origin

from Peru under the Lisbon Agreement.

8.22 By virtue of numerous trade agreements entered into by Republic of

Peru, PISCO is recognized as a GI Peruvian‟s spirit in upto 17 countries. On

14

th

July, 2005, WIPO formally notified to the Government of Peru that

since 19

th

May, 2005, the Appellation of Origin PISCO, has been registered

in favour of Peru in the International Registry for Appellation of Origin,

with the certificate of International Registration no. 865.

Analysis and Findings

9. I have heard learned counsels for the parties and have perused the

record.

10. In the present case, respondent no. 4 had filed an application bearing

no. 43 for registration of PISCO as a GI before the Registrar of Trade Marks

& GI in the year 2005. The said application was advertised in the GI Journal

W.P.(C)-IPD 17/2021 Page 14 of 47

in August, 2006. The petitioner filed an opposition against the said GI

application in 2007, wherein, it claimed shared rights over the GI PISCO.

The Registrar of Trade Marks & GI by its order dated 3

rd

July, 2009 granted

registration to respondent no. 4 for the GI „Peruvian PISCO‟, instead of

„PISCO‟, for which the GI application had been filed.

11. Aggrieved by the said order, respondent no. 4 filed an appeal before

the IPAB, which allowed the appeal vide its order dated 29

th

November,

2018, and directed the respondent no. 2 herein, to issue certificate of

registration for the GI „PISCO‟ in favour of respondent no. 4. The name

„PISCO‟ was subsequently entered in the Register of the Geographical

Indications in favour of respondent no. 4, under registration no. 43 on 17

th

June, 2019.

12. While the respondent no. 4 claims exclusive right over GI PISCO, the

petitioner claims an equal right over the said GI PISCO. In this regard, it

would be apposite to refer to the various provisions of the GI Act.

Concept of Geographical Indication

13. The preamble of the GI Act defines it as ―An Act to provide for the

registration and better protection of geographical indications relating to

goods‖.

14. The Office of Controller General of Patents, Designs and Trade

Marks & Registrar of Geographical Indications published the Manual Of

Geographical Indications Practice and Procedure, which states the objective

of the GI Act, in the following manner:

―xxx xxx xxx

The Object of the Geographical Indications of Goods (Registration and

Protection) Act, 1999 is three fold, firstly by specific law governing the

geographical indications of goods in the country which could adequately

W.P.(C)-IPD 17/2021 Page 15 of 47

protect the interest of producers of such goods, secondly, to exclude

unauthorized persons from misusing geographical indications and to

protect consumers from deception and thirdly, to promote goods bearing

Indian geographical indications in the export market.

xxx xxx xxx‖

15. The GI Act seeks to protect and promote goods with a specific

geographical origin. The Act was enacted to prevent unauthorized persons

from misusing GIs and in order to protect consumers from deceptive trade

practices, and to promote economic prosperity and protection to the

producers of unique goods attached to a region. Furthermore, the legislative

regime brought forth regarding GI by way of this Act, was in compliance to

the TRIPS Agreement, which in effect would provide for reciprocal

protection to the GIs which are recognized in India as well. Thus, the GI

Act, while ensuring protection to producers, also envisages curtailing any

manner of confusion or deception to the consumer, with regards to goods

under the different GIs.

16. The expression „indication‟ has been defined in Section 2(1)(g) of the

GI Act, to include any name, geographical or figurative representation, or

any combination of them, conveying or suggesting the geographical origins

of goods to which it applies. „Indication‟ suggests or conveys the origin or

source of the goods. GIs are used to indicate the regional origin of particular

goods, provided those goods derive their particular characteristics from their

geographic origin.

17. The GIs identify agricultural, natural or manufactured goods, which

originate from a particular geographical territory, where the given quality,

reputation, or other characteristics are linked to that particular geographical

origin. In the context of India, Darjeeling Tea was granted the first GI tag,

awarded in the year 2004-2005, bearing no. 001 & 002 in the Registry of GI.

W.P.(C)-IPD 17/2021 Page 16 of 47

18. Section 2(1)(e) of the GI Act defines „Geographical Indication‟ as

follows:

―2. Definitions and interpretation. – (1)……..

(e)―geographical indication‖, in relation to goods, means an

indication which identifies such goods as agricultural goods,

natural goods or manufactured goods as originating, or

manufactured in the territory of a country, or a region or locality in

that territory, where a given quality, reputation or other

characteristic of such goods is essentially attributable to its

geographical origin and in case where such goods are

manufactured goods one of the activities of either the production or

of processing or preparation of the goods concerned takes place in

such territory, region or locality, as the case may be.

Explanation.--For the purposes of this clause, any name which is

not the name of a country, region or locality of that country shall

also be considered as the geographical indication if it relates to a

specific geographical area and is used upon or in relation to

particular goods originating from that country, region or locality,

as the case may be;‖

19. Thus, the definition of geographical indication clearly stipulates that

GI tag is an indication to recognize the origin of a product, which is

manufactured in that territory, for which the GI is issued. GI, thus, promotes

identification of goods with a geographical attribute. By its very definition,

GI indicates that particular goods are manufactured or originate from a

particular territory, country, region or locality and possess some special

quality, reputation or characteristics, which are essentially attributable to its

geographical origin. The same is corroborated even by Article 22.1 under

the TRIPS agreement, which is reproduced as under:

“Indications which identify a good as originating in the territory of a

member, or a region or locality in that territory, where a given

quality, reputation or other characteristics of the good is essentially

attributable to its geographical origin”

20. India is a signatory of the TRIPS agreement, which is the most

noteworthy of international documents, which necessitates the member

W.P.(C)-IPD 17/2021 Page 17 of 47

nations/states to abide to the basic standards in relation to GIs and bring

forth sui generis legislative mechanisms towards the same. Thus, the

Madhya Pradesh High Court in the case of Scotch Whisky Association

Versus J.K. Enterprises and Others, 2023 SCC OnLine MP 5352, observed

as follows:

―xxx xxx xxx

24. Article 24 titled as ‗International Negotiations; Exceptions‘ further

envisaged all the member nations to come forward with full fledged

legislative mechanisms for implementation of the commitments made under

TRIPS.

25. In pursuance thereof, the Parliament thereafter enacted the GI Act in

1999. The aims and objectives stated the Act to be meant for the exclusion of

unauthorised persons from misusing geographical indications; to protect

consumers from deception; adding to the economic prosperity of

the producers of such goods and also promoting goods bearing Indian GI in

the export market‘. Unless a GI is protected in the country of its origin, no

obligation under TRIPS follows for other countries to extend reciprocal

protection.

26. In the above legislative background, especially the commitments made at

the international level, the interpretation of any provision of the GI Act must

be in tune with the aforementioned objectives and commitments made under

TRIPS by India at the International Fora.

xxx xxx xxx‖

(Emphasis Supplied)

Distinction of Rights under GI Act and Trade Marks Act

21. The rights conferred by GI Act are distinct from the rights conferred

under the Trade Marks Act, 1999 (“Trade Marks Act”). While the trademark

is a private right of an individual or an entity, GI is collective right of

producers in a region. The Trade Marks Act distinguishes the goods and

services of one trader from others. On the other hand, GI indicates a

product‟s origin from a specific geographical origin. While a trademark can

W.P.(C)-IPD 17/2021 Page 18 of 47

be assigned, transferred or licensed, a GI cannot be assigned or transferred.

The trademark belongs to one person or entity, however, GI belongs to the

community/region. Thus, any person claiming to be the producer of the

goods in respect of which a GI has been registered, can make an application

under Section 17 of the GI Act for registration as authorized user. The

primary distinction noticeable between a trademark and GI is that while a

trademark connotes the recognition of the manufacturer of certain goods or

services, in contrast, a GI connotes the recognition of the origin of the

goods, whose basis lies in a geographical region.

22. Under the Trade Marks Act, priority of adoption and use of a mark are

key concepts for determination of ownership of a trademark. However,

priority plays no role in ownership under the GI Act, which is concerned

with identification of particular goods as originating or manufactured in a

specific country, territory, region or locality, with given quality, reputation

or other characteristics, as essentially attributable to its geographical origin.

Thus, the only relevant consideration is whether the goods in question are

actually, and in fact, identified by that geographical origin in the relevant

markets, trade channels, consumers etc.

23. The Calcutta High Court in the case of Tea Board, India Versus ITC

Limited, 2011 SCC OnLine Cal 1083, in this regard made observations as to

the distinguishing aspect of principles under the Trade Marks Act and the GI

Act. Thus, it was observed as follows:

―xxx xxx xxx

The objection as to the tenability of a cross-category complaint has to

be dealt with differently for the two species of rights that the plaintiff

canvasses. In respect of certification trademarks, registration may be

obtained both in respect of goods and services. Just as there could be

products which are certified on the basis of their origin, material,

W.P.(C)-IPD 17/2021 Page 19 of 47

mode of manufacture or other characteristics, types of services may

also be certified on the basis of the quality, accuracy or other special

features. It would then defy reason that an unauthorised use of a

certification mark relating to any goods is used by a service provider

without the registered proprietor of the certification mark having any

right to complain. Say, cooks from Lucknow are permitted to use the

―Lucknavi‖ certification mark as indicative of their services. If then, a

packet of biriyani claims to be ―Lucknavi‖, it cannot be said that the

proprietor or authorised user of the certification service mark would

have no cause of action against the impugned mark in respect of the

goods complained of.

In the case of geographical indication, however, the matter may be

slightly different. The focus of the GI Act is on goods; so much so, that

in the chapter relating to offences, there does not appear to be a direct

recourse against any service wrongfully appropriating a

registered geographical indication. Yet, both in the deeming provision

of Section 22(1)(b) of the GI Act and in recognising other forms of

passing-off in Section 20(2) thereof, the GI Act may not altogether

preclude a cross-category complaint.

xxx xxx xxx‖

24. In the aforesaid background, applying the facts of the present case, it

is to be considered as to whether the product of the petitioner, as originating

from Chile, is indeed identified as PISCO.

Identification of Petitioner‘s PISCO:

25. This Court notes the submissions of the petitioner, wherein, it has

been stated in categorical terms that Peru and Chile have a shared history in

the manufacture of the alcoholic beverage PISCO. Para 15 of the writ

petition in this regard, is reproduced as under:

―xxx xxx xxx

15. Peru and Chile have a shared history in the manufacture of the

beverage PISCO in the lea region of Peru and Copiapo and Coquimbo

regions of the Republic of Chile. There are 7 kinds of PISCO which are

manufactured across the regions which are part of both Chile and Peru.

The seven kinds of PISCO which are produced are Pure, Aromatic, Green

Must, Acholado, Special, Reserve and Great. PISCO was manufactured

for centuries in regions which were part of present day Chile and Peru.

Definitive political boundaries came to be established only between 1880

W.P.(C)-IPD 17/2021 Page 20 of 47

and 1940, however, the production of PISCO continued in both the

countries.

xxx xxx xxx‖

(Emphasis Supplied)

26. The petitioner has relied upon Encyclopedia Britannica, which under

the head „Chile‟, contains the following passage:

―The main cities, somewhat smaller than those of central Chile, are

located in the valleys: they include Copiapo, in the valley of that name,

the most important mining centre of the country during the 19

th

century;

Vallenar, Ovalle, and Vicuna. Agriculture, goat raising, and iron and

copper mining are the main economic activities. From this region come

the famous pisco (a white brandy distilled from sun-dried grapes), fine

wines, and high-quality fruits for export.‖

(Emphasis Supplied)

27. As regards the vintage of the period since PISCO is associated with

Chile, the petitioner has pleaded in the writ petition, as follows:

―xxx xxx xxx

17. It is submitted that the first document that proves the production of

Pisco in Chile was found in 1733, in a public inventory of Latorre

Ranch located on the region of Coquimbo in which there were listed

barrels of Pisco produced in that Farm. This is the oldest genuine

document that proves the existence of Pisco in Chile, older than any

document that Peru has filed in this case. Members of the Petitioner

have been in the business of openly, extensively and continuously

carrying on production of PISCO for well over a century as

documented in the Decree dated 12

th

November, 1873.

xxx xxx xxx‖

(Emphasis Supplied)

28. Further, this Court notes the submission of the petitioner that Costa

Rica has recognized and granted geographical indication rights in PISCO

(Chile) to the petitioner by virtue of registration certificate dated 04

th

February, 2008.

29. It is to be noted that there are multiple Free Trade Agreements

between Chile and other countries all over the world, which recognize the

Republic of Chile‟s rights in PISCO. Details of said Free Trade Agreements,

W.P.(C)-IPD 17/2021 Page 21 of 47

as given in the writ petition, are as follows:

―xxx xxx xxx

i. Free Trade Agreement between Mexico and Chile dated 17

th

April,1998.

ii. Trans Pacific strategic economic partnership between Chile,

Brunei, New Zealand, and Singapore dated 18

th

July, 2005.

iii. Free Trade Agreement between South Korea and Chile dated 15

th

February, 2003.

iv. Association agreement between European Union and Chile dated

18

th

November, 2002.

v. Free Trade Agreement between USA and Chile dated 5

th

December, 1997.

vi. Free Trade Agreement between China and Chile dated 18

th

November, 2005.

vii. Free Trade Agreement between EFTA and Chile dated 26

th

June,2003.

viii. Free Trade Agreement between Central America and Chile dated

18

th

October, 1999.

ix. Free Trade Agreement between Canada and Chile dated 5

th

July,1997.

x. Free Trade Agreement between Australia and Chile that came into

force on 6

th

March 2009.

xi. Free Trade Agreement between Japan and Chile that came into

force on 3

rd

September 2007.

xii. Free Trade Agreement between Turkey and Chile that came into

force on 1

st

March 2011.

xiii. Free Trade Agreement between Vietnam and Chile that came into

force on 4

th

February 2014.

xiv. Free Trade Agreement between Hong Kong and Chile that came

into force on 29

th

November 2014.

xv. Free Trade Agreement between Thailand and Chile that came into

force on 5

th

November 2015.

xvi. Free Trade Agreement between Uruguay and Chile that came into

force on 4

th

October 2016.

xvii. Free Trade Agreement between Brasil and Chile that came into

force on 21

st

November 2018.

xviii. Free Trade Agreement between Indonesia and Chile that came into

force on 10

th

August, 2019.

xxx xxx xxx‖

W.P.(C)-IPD 17/2021 Page 22 of 47

30. This Court also takes note of the submission of the petitioner that the

application for GI PISCO filed by the Peruvian state was refused by Czech

Republic, France, Italy, Hungary, Slovakia, Portugal, and Iran, while it was

withdrawn from Mexico, Bulgaria and Costa Rica. In reply to the said

assertion made on behalf of the petitioner, respondent no. 4 has made

submissions in the following manner:

―xxx xxx xxx

14…………..

(i) The Petitioner has deliberately made a false assertion that the GI

Application filed by the Republic of Peru before the World

Intellectual Property Organization (WIPO) in Czech Republic,

France, Italy, Portugal, Hungary, Slovakia and Iran was refused and

that it was withdrawn from Mexico, Bulgaria and Costa Rica. It is

submitted that the Petitioner has knowingly concealed that Czech

Republic, France, Italy, Portugal, Hungary and Slovakia only

maintained partial refusals on account of a bilateral agreement of

2002 between the European Union and the Republic of Chile.

Partial Refusal in fact implies that the GI "PISCO" is recognized as

a Peruvian Appellation of Origin. However, such registration is

subject to a sole limitation that commercial or market access rights

are conferred to Chile under the said agreement. This Agreement

does not in any manner confer any statutory or judicial recognition

to the Chilean alcoholic beverage, whatsoever in those countries,

as they are mainly political in nature and are concerned with

commercial interests without paying heed to historical facts. That

said, the Petitioner has willfully concealed that vide regulation EU

No. 1065/2013 passed by the European Union, PISCO was

recognized as a Geographical Indication in favour of Peru with the

exception that owing to the bilateral agreement with Chile, the

Regulation would not hinder the use of such denomination in

products originating from Chile. As far as the Republic of Peru's GI

Application in Iran is concerned, it is submitted that Iran, being an

Islamic country prohibits production, distribution, consumption and

registration of alcoholic beverages. Thus, Iran refused Republic of

Peru's Application, as it would have done for any other producer of

alcohol in the world.

xxx xxx xxx‖

(Emphasis Supplied)

31. Perusal of the aforesaid stand of respondent no. 4, as encapsulated in

W.P.(C)-IPD 17/2021 Page 23 of 47

its counter affidavit, clearly shows that the right of the petitioner in PISCO,

has been recognized by various countries, and the petitioner has been co-

existing with respondent no. 4, for the alcoholic beverage PISCO in various

countries in the world. The fact of partial refusals by various countries to its

application for GI registration of PISCO, so as to protect the PISCO as

originating from Chile on account of various Free Trade Agreements, has

been admitted by respondent no. 4. The list of various countries where

PISCO has been recognized in Free Trade Agreements signed by Chile and

recognition of PISCO in favour of Chile by registration and law, as given by

the petitioner, is reproduced as under:

W.P.(C)-IPD 17/2021 Page 24 of 47

32. As regards the aforesaid Free Trade Agreements, respondent no. 4 has

stated that the said agreements are of a commercial and political nature and

are mutually beneficial trade arrangements. It is the case of respondent no. 4

that any mutual agreement between two countries does not tantamount to

statutory protection of any Intellectual Property (“IP”) rights. Though, the

submission made by respondent no. 4 that Free Trade Agreements are

commercial trade arrangements between two countries may be tenable,

however, the fact remains that such agreements have recognized and

identified the product of the petitioner originating from Chile, as PISCO.

33. This Court also notes the submission of the petitioner that Chilean

PISCO has received multiple accolades and awards by various

organizations. The submission of the petitioner in this regard, is reproduced

as under:

―xxx xxx xxx

21. Chilean PISCO has received multiple accolades and awards by

various organisations including but not limited to Gold Medal in San

Francisco World Spirits Competition in 2000; Diploma Certificate of

Gold Medal obtained in the "Concours Modial de Bruxelles, Chile

2007"; Pisco Mistral Reservado 2006, certificate issued by Institut

International Pour Les Selections De La Qualite and Gold Medal

obtained in 7

th

World Selection for Wines, Alcohol and Liquors; Gold

and silver medal in the International Spirits Challenge of 2016, etc.

xxx xxx xxx‖

(Emphasis Supplied)

34. The petitioner has also given list of various legislations enacted by

W.P.(C)-IPD 17/2021 Page 25 of 47

Chile for over a century. The submissions of the petitioner in this regard, are

reproduced as under:

―xxx xxx xxx

22. For over a century, Chile has enacted legislation with respect to

PISCO. The said laws which were enumerated and explained in the

evidence in support of the opposition are being reiterated here in brief:

i. In 1916, Law No. 3,097 was promulgated, which modified two

precepts about PISCO with respect to taxation.

ii. In 1929, Law No. 4536 was promulgated replacing the previous one

and laid down that natural PISCO producers will pay only half tax.

iii. In 1931 Decree-Law No. 181 was promulgated which created the

Denomination of Origin called PISCO, reserving the name for spirits

which came from the distillation of grape wine located in places that

belong to the 'Pisco Zone". The said zone corresponded to the valleys

of III and IV region of Chile.

iv. In 1935, Law No. 3,068 established a normative body that regulated

the production of PISCO.

v. The current Alcohol Law (18.455) in Chile has a complete chapter

called "About the Denomination of Origin" which contains four articles

on PISCO.

On the contrary, Peru enacted the legal recognition of PISCO as a

denomination of origin in 1991.

xxx xxx xxx‖

(Emphasis Supplied)

35. This Court also notes that Peru‟s registration for PISCO in Europe is

subject to Chile‟s rights. The relevant extract from the document pertaining

to the same, as available on record, is reproduced as under:

―xxx xxx xxx

xxx xxx xxx‖

W.P.(C)-IPD 17/2021 Page 26 of 47

36. The issue in the present case is whether the „Chilean Liquor‟ as

referred in the impugned order of the IPAB, is known/identified as „PISCO‟.

The fact that the alcoholic beverage from Chile is known as PISCO is

evident from various documents on record, including, from the Free Trade

Agreements with several countries, as well as the documents pertaining to

the European Union, which acknowledge that PISCO is also from Chile.

37. 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 across the world, it is established beyond doubt

that the alcoholic beverage from Chile, is recognized and called as PISCO.

38. Thus, it is evident that the goods of the petitioner are identified as

PISCO. The submissions and documents on record clearly point out to the

fact that PISCO has a long and well documented origin in Chile. Thus, there

is no basis for the IPAB to not have recognized the existence of Chilean

PISCO.

39. This Court notes that the Learned IPAB has made reference to the

alcoholic beverage product of Chile as „Chilean Liquor‟ and premised the

impugned order on the basis that the adoption of PISCO by Chile is

historically dishonest and is a product of misappropriation. In order to deal

with this issue, it is pertinent to make reference to Section 9 of the GI Act,

which relates to prohibition of registration of GIs under the GI Act. The

same is reproduced as under:

―9. Prohibition of registration of certain geographical indications.—A

geographical indication—

(a) the use of which would be likely to deceive or cause confusion; or

(b) the use of which would be contrary to any law for the time being in

force; or

W.P.(C)-IPD 17/2021 Page 27 of 47

(c) which comprises or contains scandalous or obscene matter; or

(d) which comprises or contains any matter likely to hurt the religious

susceptibilities of any class or section of the citizens of India; or

(e) which would otherwise be disentitled to protection in a court; or

(f) which are determined to be generic names or indications of goods and

are, therefore, not or ceased to be protected in their country of origin, or

which have fallen into disuse in that country; or

(g) which, although literally true as to the territory, region or locality in

which the goods originate, but falsely represent to the persons that the

goods originate in another territory, region or locality, as the case may be,

shall not be registered as a geographical indication.‖

40. Reading of the aforesaid indicates that Section 9 of the GI Act deals

with prohibition of registration of certain geographical indications. Section

9(a) prohibits registration of GIs, the use of which would be likely to

deceive or cause confusion. Section 9(g) stipulates that a geographical

indication, which although literally true as to the territory, region or locality

in which the goods originate, but falsely represents to the person that the

goods originate in another territory, origin or locality, as the case may be,

shall not be registered as a geographical indication.

41. There is no reference to goodwill or misappropriation in the GI Act.

Section 9 of the GI Act deals with prohibition of registration of certain GIs,

and does not refer to „priority‟ or „dishonesty‟, unlike Section 11 of the

Trade Marks Act which deals with „relative grounds of refusal‟, which

makes reference to an earlier/prior trademark.

42. As noted hereinabove, GI is a community right and not a private

property or a statutory monopoly, unlike a trademark. As per Section 24 of

the GI Act, a GI cannot be transferred, assigned or licensed. An authorized

user of a GI must make an application to the Registrar to be brought on

record, and not to the applicant under Section 17 of the GI Act. Therefore,

W.P.(C)-IPD 17/2021 Page 28 of 47

the rights pertaining to GI refer to the geographical area from where the

goods in question originate. The test would be whether the goods in question

are actually recognized and identified to be produced or manufactured in a

particular region, locality, territory or country.

43. As regards prior use of GI, as per TRIPS agreement, Article retrieved

from the website of World Trade Organization, as attached along with the

rejoinder of the petitioner, states as under:

―xxx xxx xxx

(iii) Prior use of the geographical indication (Article 24.4) This

provision relates to the prior use of a GI, and is mainly relevant to

situations where there has been prior use of a GI that is not covered

by the exceptions in relation to generic terms and prior trademark

rights. Its scope is limited to GIs for wines and spirits. It is optional in

the sense that it allows, but does not oblige, a member to permit the

continuation of the forms of prior use covered by the provision.

For prior use of a GI in that member to be covered by the exception,

it must be:

• continued and similar use

• of a particular GI (of another member) identifying a wine or a spirit

• in connection with goods or services

• by nationals or domiciliaries of that member

• who have used that GI in a continuous manner

• with regard to the same or related goods or services

• in the territory of that member,

• either for at least ten years preceding 15 April 1994 (the date of

signature of the WTO Agreement), or

• for any period before that date, provided the use has been in good

faith.

The ‗similar‘ use that can be continued is understood by at least some

members to require that the use be similar in respect of both scale and

nature.

xxx xxx xxx‖

(Emphasis Supplied)

44. However, the present case is not related to prior use of the GI,

considering the admitted use of PISCO by both Peru and Chile.

W.P.(C)-IPD 17/2021 Page 29 of 47

Furthermore, Article 24.4 itself elaborates upon the exceptions to the

protection upon basis of prior use of a GI. Prior use of GI is altogether a

separate concept from prior use of a mark/name, as understood in the

context of trademarks.

45. This Court is not required to comment on the history of the dispute

between Chile and Peru. The questions, as to who was the prior user of the

term PISCO or whether Chile‟s use of PISCO is dishonest in any manner, do

not arise for determination of the issue in hand. It is evident that the

alcoholic beverage originating from Chile is also identified as PISCO, in

view of the various documents on record that point out to the fact that

PISCO is also geographically associated and identified with Chile.

Therefore, the findings of the learned IPAB that the use of PISCO with

reference to Chilean PISCO has historically been dishonest and that Chile

has misappropriated the GI PISCO, are erroneous and not relevant for

adjudication of the said issue. The GI law does not concern itself with the

political history of the country, but with the cultural/industry practice of the

name given to a product of that country. It is not the function of any court of

law to give findings based on historical speculation or to pass legal

judgments on the vagaries of socio-political events.

46. The considerations for registration of and right to use a GI under the

GI Act, are completely distinct, from considerations under the Trade Marks

Act. The considerations regarding dishonest adoption, misappropriation and

prior user, are concepts that are relevant for registration of a trademark.

However, for the purposes of GI, it is to be seen and considered as to

whether goods are identified as being originating or manufactured in a

particular territory, country, region or locality.

W.P.(C)-IPD 17/2021 Page 30 of 47

47. Furthermore, as noted above, Section 9 of the GI Act, prohibits

registrations of GIs that are likely to cause confusion or deception amongst

the consumers. Thus, explaining the concept of confusion, in the book, ‗Law

Relating to Trademarks, Passing off and Geographical Indication of

Goods‘, by D.P. Mittal, 2022 Edition, Chapter 35, it has been stated as

follows:

―xxx xxx xxx

35.3 .........The geographical indication is also not to be registered if

its use is likely to cause confusion. Confusion is mixing up. It is a

mistake of taking one thing for the other. If someone confuses two

separate things or confuses one thing with the other, it would mean

mixing up mentally and imagining they are the one. The

circumstance that causes such a situation happening can be said to

be causing confusion. If the use of the geographical indication is

likely to lead a person into mixing it with the goods of other trade

source and into imagining that they are the one, such indication is

not to be registered. Confusion may be visual or phonetic in nature,

i.e., contextual confusion, or as to trade origin. The purchasers

should not be deceived or induced into believing that the goods sold

under the geographical indication emanate from the same trade

source.

xxx xxx xxx‖

(Emphasis Supplied)

48. Thus, the finding by the learned IPAB in the impugned order referring

to the alcoholic beverage in question from Chile to be „Chilean Liquor‟,

cannot be sustained. Similarly, the issues pertaining to priority, dishonest

use, misappropriation and goodwill, as referred by the learned IPAB in its

impugned order with regard to use of PISCO by Chile, again cannot be

sustained.

49. This Court also takes note of the submission made on behalf of the

petitioner that Chile has not made any claim that the regions that produce

PISCO in Peru and Chile, are common, adjacent or contiguous. As per the

W.P.(C)-IPD 17/2021 Page 31 of 47

petitioner, the region which produces PISCO, is shared between Republic of

Chile and Republic of Peru, and other references to the word „shared‟, are in

the context of ‗shared claim‘ and ‗shared history‘.

50. It is also to be noted that it is respondent no. 4‟s own case that PISCO

in Peru is also grown in Tacna, Arequipa and Montegua, which are

approximately 800 Kilometers from the PISCO valley in Peru, which is

stated to be located in the Southern East Coast of Peru in the Department of

Ica. It is pertinent to note that the „Production Zones‟ in the GI application

filed by respondent no. 4, do not refer to the city of PISCO and refers to

various regions in Peru related to production of PISCO. The specification, as

given by respondent no. 4 with regard to PISCO in its application for GI, is

extracted as below:

―xxx xxx xxx

(e) Specification:

Alcoholic beverage Pisco is a liquor of grape, obtained by distilling

fresh must of recently fermented grapes in accordance with traditional

methods that maintain the principle of quality established in the

production areas previously recognized (the coast of the departments

of Lima, lea. Arequipa, Moquegua and the valleys of Locumba, Sama

and Caplina in the department of Tacna, all in Peru). In this sense,

Pisco must be elaborated by exclusively using the varieties of "Pisquer

as Grapes", among them: Quebranta, Negra Corriente, Mollar, Italia,

Moscatel, Albilla, Torontely Uvina. The Peruvian Tecnhical Standard

211-011:2002 establishes the requirements that must fulfill the grape

liquor to be considered as Pisco.

xxx xxx xxx‖

(Emphasis Supplied)

51. Similarly, in regard to the particulars of PISCO, regarding the

production zones, respondent no. 4 in its application, had stated as follows:

―xxx xxx xxx

(f) Name of the geographical indication (and particulars): PISCO

W.P.(C)-IPD 17/2021 Page 32 of 47

The production zones are located in the coast of the departments

of Lima, lea, Arequipa, Moquegua and the valleys of Locumba, Sama

and Caplina in the department of Tacna, all in peru.

xxx xxx xxx‖

(Emphasis Supplied)

52. Thus, it is clear that production of PISCO in Peru is also spread over

areas, which are not in the city of PISCO or the valley of PISCO, and the

regions producing PISCO, are situated far away from the city or the valley

of PISCO. Therefore, PISCO is not attributable to any particular city in

Peru, but rather a region, wherein PISCO is produced. The respondent no. 4

in its GI application for PISCO has referred to zoological, topographic, and

ethnic origins of the word PISCO, including, a word called ‗PISCO‘ in the

Quechua language. Therefore, even respondent no. 4‟s own case is that the

word is not derived from the name of a place alone, but has many different

origins. Hence, the fact that there exists a city called PISCO in Peru, and the

fact that a city by the name of „La Union‟ was renamed as „PISCO Elqui‟, in

1936 in Chile, have no bearing on the fact that origin of alcoholic beverages

by the name PISCO, is associated with both Peru and Chile.

53. This Court also takes note of the submission on behalf of the

petitioner that petitioner is an association of producers of the alcoholic

beverage Chilean PISCO in III and IV regions of Chile, which are located in

the river valley of Elqui, Limari, Huasco, Copiapo and Choapa. The

producers of the petitioner association have been producing and marketing

Chilean PISCO for well over a century.

54. Thus, the facts and documents on record clearly establish that both the

countries, i.e., Chile and Peru, are using the word PISCO for their alcoholic

beverages. Members of the petitioner have openly, extensively and

W.P.(C)-IPD 17/2021 Page 33 of 47

continuously been carrying on production of PISCO for a long time, as

recorded and manifested in the various documents on record.

Chilean PISCO as homonymous GI

55. This Court further notes the submission of the petitioner that Chilean

PISCO is distinct from Peruvian PISCO. The submission of the petitioner in

this regard, as given in the rejoinder, is reproduced as under:

―xxx xxx xxx

E. It is further submitted that Chilean Pisco does not use egg whites. The

only context in which egg white is used, is in the preparation of a cocktail

called "Pisco Sour", elaborated with Pisco, sugar, lemon juice and egg

whites, but in both Peru and Chile this cocktail is prepared in the same

way.

xxx xxx xxx

G. The production of PISCO in Chile is within the parameters of

classification ofalcohol. There are different production processes in both

Peru and Chile. In addition, both Peru and Chile are part and members of

the International Organization of Vine and Wine, an organization that

ensures the quality of products worldwide as well as its minimum and

maximum ranges of acceptability established by international protocols.

In this context, Chilean Pisco fulfils the standards established by the

International Organization of Vine and Wine.

xxx xxx xxx‖

56. The petitioner has claimed Chilean PISCO as homonymous GI with

Peruvian PISCO, on the basis of long and historical use of PISCO by both

countries, though, the two beverages are claimed to be qualitatively different

from each other. As per the petitioner, the claim for homonymous GI, is

distinct from a case of „trans-national‟ GI, i.e., the same product produced in

different countries, which share regions that produce the goods under the

same GI.

57. At this stage, it would be apposite to allude to the concept of

homonymous GIs. The term „homonymous‟ standalone means words which

are spelled and pronounced the same but have different meanings. In legal

W.P.(C)-IPD 17/2021 Page 34 of 47

context a fruitful example would be usage of the word ‗advocate‘ which can

be used with meaning of referring to a legal practitioner or used as a word to

express support. In relation to the present context, „homonymous GIs‟ are

those indications 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. Thus,

in principle, homonymous GIs bring about the existence of multiple GIs that

are afforded rights and protection albeit with a co-existent status, along with

addition of auxiliary information/indicator, so as to obviate any confusion or

potential of misleading of consumers, as to the true origin of the product.

58. Section 10 of the GI Act deals with the registrations of homonymous

GIs, which reads as under:

―10. Registration of homonymous geographical indications.—

Subject to the provisions of section 7, a homonymous geographical

indication may be registered under this Act, if the Registrar is satisfied,

after considering the practical conditions under which the homonymous

indication in question shall be differentiated from other homonymous

indications and the need to ensure equitable treatment of the producers

of the goods concerned, that the consumers of such goods shall not be

confused or misled in consequence of such registration.‖

59. Hence, the GI Act under Section 10, recognizes registration of

homonymous GIs in India, if the applicant satisfies that after considering the

practical conditions under which the homonymous indication in question

will be differentiated from other homonymous indications, and the need to

ensure equitable treatment of the producers of the goods concerned, and that

the consumers of such goods will not be confused or mislead in consequence

of such registration.

W.P.(C)-IPD 17/2021 Page 35 of 47

60. In the context of the claim of the petitioner for homonymous GI, it is

to be noted that the historical geographic link between PISCO and Chile, has

not only been recognized by Encyclopedia Britannica, but has also been

acknowledged globally in atleast 18 Free Trade Agreements between Chile

and other countries across the world. Further, the petitioner has GI

registration for PISCO in Costa Rica, as well as in Chile itself. Further, this

Court takes note of the submission of the petitioner that even under the

Lisbon Agreement, Peru‟s Appellation of Origin „PISCO‟ has been subject

to partial refusal from a number of Lisbon signatories, based on the

protection already existing in their territory for Chile‟s homonymous

„PISCO‟ Appellation. While the Peruvian Appellation is protected in these

Lisbon countries, however, it cannot be invoked to prevent the use of the

Chilean Appellation PISCO.

61. Explaining the concept of Appellations of Origin and Geographical

Indication, in the book, ‗Law Relating to Trademarks, Passing off and

Geographical Indication of Goods‘, by D.P. Mittal, 2022 Edition, Chapter

34, it has been stated as under:

―xxx xx xxx

Appellations of origin are a special kind of geographical indication.

Geographical indication and appellations of origin require a

qualitative link between the product to which they refer and its place

of origin. Both inform consumers about a product's geographical

origin and a quality or characteristic of the product linked to its place

of origin. The basic difference between the two concepts is that the

link with the place of origin must be stronger in the case of an

appellation of origin. The quality or characteristics of a product

protected as an appellation of origin must result exclusively or

essentially from its geographical origin. This generally means that the

raw materials should be sourced in the place of origin and that the

processing of the product should also take place there. In the case of

W.P.(C)-IPD 17/2021 Page 36 of 47

geographical indication, a single criterion attributable

to geographical origin is sufficient – be it a quality or other

characteristic of the product – or even just its reputation (WIPO,

FAQ).

xxx xxx xxx‖

(Emphasis Supplied)

62. It is further to be noted that GI Act was enacted pursuant to

Agreement on Trade Related Aspects of Intellectual Property Rights, i.e.,

„TRIPS Agreement‟. Article 23.3 of TRIPS Agreement states as under:

―xxx xxx xxx

In the case of homonymous geographical indications for wines,

protection shall be accorded to each indication, subject to the

provisions of paragraph 4 of Article 22. Each Member shall

determine the practical conditions under which the homonymous

indications in question will be differentiated from each other,

taking into account the need to ensure equitable treatment of the

producers concerned and that consumers are not misled.

xxx xxx xxx‖

(Emphasis Supplied)

63. Further, Article 23.3 read with Article 22.4 of the TRIPS Agreement

requires each member to determine practical conditions under which the

homonymous GI will be differentiated from each other to ensure equitable

treatment of the producers concerned and consumers not being misled.

Further, Article 23.3 of the TRIPS Agreement provides that in case of wines

being homonymous, it is up to the members to determine the conditions

necessary to differentiate the wines concerned from both the regions.

64. In the Indian milieu, a classic example of homonymous registration, is

that of Bangla Rasogolla registered as GI ‗BANGLAR RASOGOLLA‘, and

Odisha Rasogolla, registered as GI ‗ODISHA RASAGOLA‘. The GI

certificate issued in respect of Banglar Rasogolla, is reproduced as under:

W.P.(C)-IPD 17/2021 Page 37 of 47

65. The aforesaid GI certificate was granted on the basis of the

association of Rasogolla with Bengal and in recognition of the fact that

Rasogolla was invented in Bengal in the 19

th

century.

66. Similarly, GI registration has been granted to Odisha Rasagola, in

recognition of the fact that Rasagola has been associated historically and

culturally with Odisha‟s Shree Jagannatha Temple, Puri, which was built in

the 12

th

Century. Further, Rasagola is a milk-based confectionary, of which

„Chhena‟ (Cottage Cheese) is the main ingredient. Chhena and Chhena

based sweetmeats have been prevalent in Odisha since time immemorial.

The certificate of GI registration of Odisha Rasagola, is reproduced as

W.P.(C)-IPD 17/2021 Page 38 of 47

under:

67. The aforesaid discussion makes it evident that a product with the

same name, associated with two different regions/territories, can be granted

GI recognition. Like in the case of Rasogolla, GI registration has been

granted to both Bengal and Odisha in view of the historical and cultural

association of Rasogolla with both the regions. The fact that the applications

filed for GI indication themselves were for „BANGLAR RASOGOLLA‟

and „Odisha Rasagola‟, does not alter the position that respective prefixes

W.P.(C)-IPD 17/2021 Page 39 of 47

have been added in order to distinguish a product by the same name, as

originating from two different regions.

68. Therefore, it is evident that in view of the concurrent use of the

homonymous GI in the same territories, i.e., all over India and other parts of

the world, with a view to avoid any conflict and confusion, and to recognize

the particular geographical area of origin, the words Banglar and Odisha,

have been prefixed to the word, Rasogolla/Rasagola. This has been done, so

that the use of the homonymous GI concurrently in the same territories, is

not misleading, as the quality and characteristic of the Rasogolla/Rasagola

originating from Bengal and Odisha, are different.

69. Accordingly, the GI Act under Section 10, recognises registration of

homonymous geographical indications in India.

70. Likewise, in the present case, the alcoholic beverage originating from

both Peru and Chile are recognized and identified as PISCO. However, on

account of the pleadings and documents on record, it cannot be ignored that

PISCO from Chile is completely different and distinct from PISCO in Peru.

Therefore, in the context of concurrent use of the homonymous GI, it would

be misleading to the public as to the nature or quality of the two products,

i.e., PISCO from Chile and PISCO from Peru, if the GI PISCO does not

contain a further specific geographical identifier, in order to identify PISCO

from Peru and Chile, respectively.

71. As regards the requirement of additional information or identifier in a

homonymous geographical indication, the web page of WIPO

1

, states as

under:

―▼ What are "homonymous" geographical indications?

1

https://www.wipo.int/en/web/geographical-indications/faq/geographicalindications

W.P.(C)-IPD 17/2021 Page 40 of 47

Homonymous geographical indications (GI) are those that are spelled

or pronounced alike, but which identify products originating in

different places, usually in different countries. In principle, these

indications should coexist, but such coexistence may be subject to

certain conditions. For example, it may be required that they be used

only together with additional information as to the origin of the

product in order to prevent consumers from being misled. A GI may

be refused protection if, due to the existence of another homonymous

indication, its use would be considered potentially misleading to

consumers with regard to the product's true origin.‖

(Emphasis Supplied)

72. Therefore, additional information as regards specific geographical

identifier in the form of prefix, i.e., Peruvian and Chilean, with respect to

PISCO originating from Peru and Chile, respectively, would be in

consonance with the statutory provisions of the GI Act, ensuring that the GI

is eligible for registration and does not fall foul of Section 9(a) read with

Section 9(g) of GI Act. Furthermore, the same would also be in consonance

with the international regimes to which India is part of, with respect to

homonymous geographical indications.

73. This Court notes the extracts from a 2018 Article, as filed by the

petitioner, indicating documentary evidence recognising Chilean PISCO, as

separate from Peruvian PISCO, which is reproduced as under:

―xxx xxx xxx

Chances are, if you‘ve been out to bars and restaurants lately, you‘ve

been seeing Pisco pop up more and more on menus and in creative

cocktails. And while the Pisco Sour is often the drink that most are

familiar with, it‘s time to learn a bit more about Chilean Pisco, a truly

unique, versatile and delightful spirit.

Not to be confused with Peruvian Pisco – the two spirits have a long

and storied history, with each claiming to have been the very first

produced – the version from Chile is, in fact, very different. A grape-

based spirit, Chilean Pisco is made in only two regions of the country

– the Atacama and Coquimbo regions in the north – where the climate

is low-humidity and the terrain desert-like. This, of course, has a

major effect on the final product and brands like EI Gobernador.

W.P.(C)-IPD 17/2021 Page 41 of 47

xxx xxx xxx

―One of the main differences between Chilean and Peruvian pisco

flavor comes from the different grapes that are used in each

country‘s Pisco making process,‖ explains Adriana Soley Fuster, the

USA Spirits Area Manager for Miguel Torres, under which Pisco EI

Gobernador is produced. In Chile, the grapes used are both

aromatic – moscatel de alejandría, moscatelrosada and torontel – as

well as non-aromatic (Pedro Jiménez and Moscatel de Austria).

Chilean pisco is generally produced using discontinuous distillation.

Some versions of Chilean Pisco, like brandy, can be aged (Peruvian

Piscocan not be aged), often in barrels made from American oak,

French oak or Rauli, an evergreen beech tree native to Chile. The

biggest difference between the Chilean and Peruvian varieties,

however, is found in the distillation process. After distillation,

Chilean piscos add water to lower the ABV while, in Peru, none is

added to achieve a lower proof. Like other categories in the brandy

family, the water added must be pure, with no sugar, coloring or other

additives.

In the end, Chilean pisco is generally a fruity and floral spirit, ideal

for enjoying neat or mixing into elevated cocktails.

―Chilean pisco is not a neutral spirit,‖ says David Wondrich,

cocktail historian and Senior Drinks Editor at The Daily Beast.

―Chilean and Peruvian pisco actually share a lot of the same DNA.‖

Let‘s get to know a bit more about Chilean Pisco, shall we?

xxx xxx xxx‖

(Emphasis Supplied)

74. Other International Articles have also been placed on record to show

the recognition of Chilean PISCO alongside Peruvian PISCO. It has also

come to the fore that the flavor and other qualities of PISCO originating

from both the countries are different in their characteristics. Thus, grant of

GI PISCO to respondent no. 4 without a geographical identifier as

originating from Peru, would be misleading to the general public apropos to

the PISCO originating from Chile, as the very concept of geographical

indication is regarding quality, reputation and other characteristics of goods

in question to be essentially attributable to its geographical origin.

W.P.(C)-IPD 17/2021 Page 42 of 47

Therefore, since the quality and characteristics of PISCO from Peru are

distinct in comparison to the PISCO from Chile, it is imperative that the GI

further gives the indication as Peruvian or Chilean.

75. The respondent no. 4 has erroneously submitted that reference to

Section 7 in Section 10 of GI Act, necessarily implies that there must be a

prior GI on the Register under Section 7 for Section 10 of GI Act, to apply.

The reference to Section 7 in Section 10 of the GI Act, is in the context of

distinguishing between GI applicants (Part A of the Register) and authorized

users (Part B of the Register). Further, Section 10 of the GI Act does not

refer to other „registered‟ or „prior‟ homonymous GIs, but only „other

homonymous indication‟. Thus, the submission that Section 10 of GI Act

contemplates another GI, pre-existing on the Register, is fallacious.

76. Therefore, in view of the shared claim of Chile and Peru for PISCO

for geographical indication, it would be in the fitness of things that the same

is recognized with additional specific geographical identifier, i.e., Peruvian

or Chilean.

Conclusion

77. It is to be noted that on the basis of the finding that both Chilean and

Peruvian alcoholic beverages are identified as PISCO, the order dated 3

rd

July, 2009 passed by the GI Registry, contains a categorical finding that

registering PISCO as per the application of respondent no. 4 herein would

definitely cause confusion or deception during the course of trade among the

consumers. This Court is in complete agreement with the aforesaid findings,

in view of the detailed discussion hereinabove.

78. Further, in the order dated 3

rd

July, 2009 passed by the GI Registry, it

is recorded that PISCO is also well known in the country of Chile and that

W.P.(C)-IPD 17/2021 Page 43 of 47

the documents established that both the countries are using PISCO.

However, the impugned order passed by the IPAB does not address the

central question of whether the Chilean goods/alcoholic beverages are

identified as PISCO. Rather, in para 23 of the impugned order, IPAB has

held as under:

―xxx xxx xxx

―23. ……… … by no means the name Pisco can be identified as

Chilean or Peruvian as liquor produced by both the countries are

totally different in its elaboration, techniques and quality. Hence

Pisco prepared in Peru cannot be compared, under any circumstance,

to the Chilean liquor. In the light of the above international

recognition of the word Pisco to Peru, there cannot be any confusion

or deception among the customs. ….. … …….‖

xxx xxx xxx‖

79. The fact that the two beverages are qualitatively different, has no co-

relation with whether the alcoholic beverage from Chile, is also identified as

PISCO. The impugned order wrongly refers to the alcoholic beverage from

Chile as ‗Chilean Liquor‘, without mentioning the name by which, said

‗Chilean Liquor‘, is identified. The documents and pleadings on record

clearly establish that the alcoholic beverage from Chile is identified and

recognized as PISCO. Therefore, deception and confusion in terms of

Section 9(a) and 9(g) of GI Act is bound to occur, if the product of

respondent no. 4 is granted GI PISCO, without addition of „Peruvian‟ as a

geographic identification/indicator.

80. The definition of geographical indication as given in Section 2(e) of

the GI Act clearly stipulates an objective test of identification of goods with

a geographical attribute. Thus, the relevant consideration would be whether

the goods in question are actually and in fact identified by that indication.

Therefore, if the goods of the petitioner are actually and in fact identified as

W.P.(C)-IPD 17/2021 Page 44 of 47

„PISCO‟, the GI PISCO would legitimately apply to such goods, as per

Section 2(1)(e) of the GI Act. This is independent of the fact whether the

goods claimed in the GI application of respondent no. 4, are also identified

as PISCO, or whether, chronologically or historically speaking, such goods

came to be identified as „PISCO‟, either before or after the petitioner‟s

goods. For purposes of Section 2(1)(e) of the GI Act, the only objective

determination to be done is whether the alcoholic beverage in question from

Chile, is actually identified and recognized as PISCO.

81. The documents filed on behalf of respondent no. 4 evidence the use of

PISCO in relation to Peru. The use of PISCO by Peru is not disputed.

However, any submission by respondent no. 4 as regards its „prior use‟ of

PISCO, is not relevant, as GI jurisprudence is different from trademarks

jurisprudence. The petitioner has been able to establish on account of

various documents on record, the identification and recognition of its

products globally as PISCO, continuously, extensively and since a long

time. It is further established that even PISCO from Peru, does not

necessarily come from the place PISCO.

82. Moreover, given the evidence placed on record that the petitioner‟s

alcoholic beverage from Chile is also consistently and globally recognized

as PISCO, the technical argument of delay made by respondent no. 4 is not

relevant. Even otherwise, filing of a GI registration application for Chilean

PISCO provides a valid cause of action for filing the present writ petition.

83. It is further to be noted that it is admitted by both the parties that

Chilean PISCO and Peruvian PISCO, are different products, which are

distinct from each other. Therefore, as noted above, the present is not a case

of „trans-national GIs‟, but that of homonymous GIs. None of the averments

W.P.(C)-IPD 17/2021 Page 45 of 47

made in the pleadings by the petitioner imply or suggest that the

products/alcoholic beverages from the two countries are the same.

84. This Court further rejects the submission raised on behalf of

respondent no. 4 that by pleading a case of „homonymous GIs‟, the

petitioner has brought in a completely new argument. This is a wholly

fallacious submission in view of the case set up by the petitioner in the writ

petition as well as reference to Section 10 of GI Act pertaining to

homonymous GIs, in the notice of opposition filed by the petitioner before

the Registrar of Trade Marks & GI. The GI Registrar directed that the word

„Peruvian‟ be added as a condition for registration, in consonance with the

express provision pertaining to homonymous GIs. Thus, recognizing the

right 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.

85. Thus, in view of the detailed discussion hereinabove, it is evident that

the impugned order passed by the IPAB has erred in exclusively granting the

rights over PISCO to respondent no. 4. The IPAB failed to appreciate that

there are documents establishing that both the countries, i.e., Chile and Peru

are using PISCO and have parallel agreements for use of PISCO with

various other countries.

86. The impugned order has completely disregarded the fact that emerges

from the various documents placed on record, that both Peru and Chile have

shared history to the manufacture of the beverage PISCO.

87. This Court is of the view that considering the fact that the alcoholic

beverage in question from Chile is also recognized and identified, the world

W.P.(C)-IPD 17/2021 Page 46 of 47

over as PISCO, grant of a GI for the word PISCO per se, exclusively to

respondent no. 4, without specifying the GI of Peru, would be detrimental to

the legal and legitimate commercial interest of producers of PISCO in Chile,

and the same would also likely to deceive and cause confusion.

88. It is also to be noted that there is no analysis or reference whatsoever

in the impugned order to the actual and long-standing legitimate usage of

PISCO by Chile worldwide, as well. The impugned order further fails to

appreciate the import of various laws, as noted hereinabove, in the Republic

of Chile, which recognize PISCO, as a Chilean produce. The fact that the

products from Peru and Chile are distinct in substance, is all the more reason

for providing a GI, that refers to the different countries, as has been done in

the order dated 3

rd

July, 2009 passed by the Registrar of Trade Marks & GI,

by granting GI to respondent no. 4 as „Peruvian PISCO‟.

89. As regards the submission of the petitioner regarding locus standi of

respondent no. 4, i.e., Embassy of Peru, it is to be noted that Section 11 of

the GI Act permits an association of persons or producers, or an organization

or authority established by or under law, to file an application for registering

a Geographical Indication. Such establishments could be within or outside

India.

90. This Court notes the submission of respondent no. 4 that Peru has

passed a legislation, namely, „Legislative Decree 823‟ on 23

rd

April, 1996,

by virtue of which, Peruvian state is the owner of Peruvian Appellations of

Origin. As per respondent no. 4, representing the interest of the producers,

Embassy of Peru, representing the State and the country of Peru, have

applied for and secured several registrations of the GI/Appellation of

Origin/Denomination of Origin „PISCO‟ around the world, including, the GI

W.P.(C)-IPD 17/2021 Page 47 of 47

application, as filed in the present case. Thus, as per the current legislation

in Peru, the Peruvian State is the official holder of the Appellation of Origin

PISCO. Hence, the respondent no. 4, i.e., the Embassy of Peru in India,

which acts as an authority established under law by the Republic of Peru, is

entitled to represent the interest of the Peruvian farmers and producers for

registration of GI. The respondent no. 4 is clearly acting in the interest of the

Peruvian State and the producers/manufacturers, for whose interest, the GI

application in question, was filed. Therefore, this Court rejects the

contention raised by the petitioner as regards the authority of respondent no.

4, to file the GI application.

91. Accordingly, in view of the detailed discussion hereinabove, the

impugned order dated 29

th

November, 2018 passed by IPAB is set aside.

The GI granted to respondent no. 4 is directed to be modified as „Peruvian

PISCO‟. Consequently, it is directed that the entry no. 43 in favour of

respondent no. 4 dated 17

th

June, 2019, for PISCO in the Register of the

Geographical Indications, be modified to include „Peruvian‟ before PISCO.

92. It is further directed that the stay, as granted vide order dated 16

th

June, 2020, on the GI application no. 689 for the GI Chilean PISCO filed by

the petitioner on 3

rd

June, 2020, is hereby lifted. The Registrar of Trade

Marks & GI will accordingly proceed with the application of the petitioner,

in accordance with law.

93. The present writ petition, along with the pending applications, is

accordingly, disposed of.

(MINI PUSHKARNA)

JUDGE

JULY 07, 2025/Ak