SpicyIP: Foreign G.Is’ Enter India


SpicyIP had earlier this year carried a post on the Scotch Whisky Manufacturers Association (SWA) move to protect the IPR rights of the Scotch Whisky in China.

We had also averred that SWA could move the Indian G.I Registry next to protect its status, more specifically given its fallout in the trademark wrangle with the Khodays.

Livemint reports this morning

“The Scotch Whisky Association, which represents whisky distillers and exporters of Europe, is planning to register the geographical indication (GI) status of Scotch whisky in India.
The decision comes after the group lost a trademark case in May against Bangalore-based Khoday India Ltd, an Indian distiller that makes the Peter Scot whisky. The group has hired New Delhi-based law firm Anand and Anand to file the application with the Controller General of Patents Designs and Trademarks.”

Significantly this is only the second foreign G.I to be filed in India. As such the Indian Act provides scope to accord G.I cover to goods of foreign origin by virtue of having established a reputation in India. Section 84 of the G.I Act affords protection to goods of foreign origin on par with local products carrying a G.I registration.

Pisco , a Peruvian based company filed a G.I under Class 33 of the G.I Act in India for its native alcoholic beverage.Pisco is distilled and produced in Peru , obtained from the juice of the Pisquera grapes an indigenous produce of the nation, applying traditional production and distillation techniques specific to the place and country of origin.

The Scotch Whisky application only the second in the line of foreign of G.I is however likely to have a more contentious track record than its predecessor. This is likely to set off a spat of skirmishes with the Indian Whisky producers who have been marketing their produce as Scotch whisky and as much set a landmark precedent in the G.I space The SWA contends that the term Scotch essentially refers to whisky distilled and produced in the Scottish Highlands and cannot be applied in a generic sense.

Should the SWA application be granted a G.I registration, the local producers could technically be asked to re label their produce as “blended with Scotch whisky bulk”, or entirely remove the word Scotch from the label. Would be interesting to watch how this reconciliation is arrived at. This is the first instance where a foreign G.I could potentially trigger of a roll back effect that is prejudicial to the interests of local producers.

The ‘Roll Back’ effect as a strategy was envisaged by the EU and actively pushed by the ‘Friends of the G.I’ nations. The Rollback and extension strategy intends to prohibit the generic use of term by current producers that infringes upon a later registered G.I. This has been a concept vociferously debated in International Fora, albeit inconclusively.

This is now likely to be played out in the Indian context as well with the SWA application for its Scotch Whisky

2 comments.

  1. GenericIPguy

    It would be worth while to see how the Scotch GI moves ahead in India… considering the Supreme Court Judgment in Khoday Distilleries Case… keeping in view the fact that Scotch Whiskey / Distilleries Association.

    Regards,
    GenericIPguy

    Reply
  2. Aysha Shaukat

    Hi GenericIP

    Thanks for your comment to the post.

    Would be interesting to watch how Indian Jurisprudence will handle the conflict between a prior Trademark and a later G.I.

    EC regulations provide some guidance to this rather contentious TRIPS provision that accords preference to a GI over a earlier Trademark.

    The SWA application and the ongoing dispute over the Himalaya Water should possibly help throe some light on this issue.

    Regards

    Aysha

    Reply

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