In this post our Spicy IP Fellowship applicant, Vasundhara Majithia discusses the recent Scotch Whisky GI decision. This is her fourth submission for the fellowship.
“Too much of anything is bad, but too much good whiskey is barely enough.” –Mark Twain
Despite approximately 260 Geographical Indications (GI) registrations, India has seen very few landmark decisions based on GIs. We have previously blogged about one such instance, in Tea Board vs ITC Ltd. here. More recently, the Scotch Whisky Association (“SWA”) filed a case in the Delhi High Court and raised hopes for another important ruling relating to GIs.By way of background, India is among the top ten export markets for Scotch Whiskey but Scotch makes up less than 1% of India’s total spirit consumption.
Readers may also be interested in knowing that this is one of the first major IP decisions from the recent commercial courts bench under the new Commercial Courts Act, 2015 and was disposed in only two months.
Background of the Case
The SWA is a UK based organization that works for the advancement of global interests and profile of Scotch Whisky. In 2006 the SWA filed a case against Golden Bottling Limited for manufacturing a “Red Scot” whisky.
The SWA alleged that the name of the whisky gave the consumers the impression that the whisky originated in Scotland and that it was in fact the real Scotch Whisky. The court, after analysing the definition of “Scotch Whisky” under the UK Scotch Whisky, Act, 1988 and Rule 3 of the Scotch Whisky Order, 1990 agreed that Scotch Whisky was a GI. However since Scotch Whisky was not registered as a GI in India back then, the court was unable to uphold the GI. The court relying on Section 20(1) of the Indian GI Act, 1999, which prohibits any person from instituting any proceedings to prevent or to recover damages for the infringement of an unregistered GI, held the Defendant guilty only of the tort of passing off. Further the court restrained the Defendant from using “Scot” or “Scotch” to market its products. Readers can read about another unsuccessful claim of the SWA that we had earlier blogged about here.
Subsequently, the Government of India, vide a 2010 notification, recognized Scotch Whisky as a GI. In 2015, the SWA filed a case against Oasis Distilleries, Adie Broswon Distilleries and Malbros International Private Limited for using the term “Scotch Whisky” and on their labels.
The SWA alleged that the Defendants had infringed upon their GI as they were based outside of Scotland and had not been verified by the HMRC scheme. They also cited the 2010 GI registration in India and Article 23 of TRIPS which allows for additional protection to be granted in case of wines and spirits. According to the SWA, this meant that no reference to Scotch Whisky could be made on the label of a whisky produced in India, even if it contained some Scotch. However the parties settled and the Respondents filed an undertaking and withdrew their trademark application.
While the SWA has been celebrating its victory, unfortunately an opportunity to have a ruling on merits in this case has been lost. This case could have been the first instance of an injunction being allowed in a case pertaining to the infringement of GIs. As Mark Twain says, we can barely ever have enough Scotch (rulings)!
Image from here