recently, The High Court of Madhya Pradesh, India, ruled in Scotch Whisky Association vJK EnterprisesThe decision upheld the independent rights of the registered owner of the geographical indication of Scotch whisky, Rejected the prerequisite that authorized users must participate in the prosecution in order to bring an infringement lawsuit.

Background of the case

Scotch Whisky Association (SWA) It is a company headquartered in the UK, by56An entity involved in the Scotch whisky trade in the United Kingdom——In particular, the physical composition of Scotland. 2009years1month5day, The association has applied for a geographical indication registration for Scotch whisky in India (The first151Application number) , Merge with2010years9month23Day of approval, Become the registered owner of the geographical indication. therewith, The association filed a lawsuit at the Indore Commercial District Court againstJK EnterprisesFiled a lawsuit, The request prohibits the entity from producing and selling non-Scotch whisky under any brand name, Including the Top of London (London Pride) , The design of the Union Jack or any other similar image.

JK EnterprisesOn the basis of "1999Geographical indication of goods (Registration and protection) method" ( "Geographical indication method" ) The first21article, Motion for dismissal on the grounds that the authorized user of the geographical indication is not a co-litigant. 2021years10month28day, The district court ruled, Consent only if the authorized user is listed as a necessary party, Before a lawsuit can be filed.

The association filed a written petition with the Madhya Pradesh High Court over the district court's decision, Challenge the order and argue, As the registered owner, It has an independent right to institute proceedings against violations of geographical indications, Without authorizing the user to participate.

right "Geographical indication method" Explanation of

The decision as to whether it is necessary for the Association to Sue the authorized user in order to bring its lawsuit depends on the right "Geographical indication method" Explanation of. The bill would no2articlenstylish "Registered owner" The term is defined as any individual or producers' association or any organization registered in the register as the owner of a geographical indication" . In addition, The first21It also stipulates:

"If the registration of the geographical indication is valid, apportion... The right of registered owners of geographical indications and their authorized users to obtain remedies for violations of geographical indications in the manner provided for in this Law. "

The problem is control21Article No1Chinese words "and" Should I read it together or not. The court must determine whether the term requires the registered owner and the authorized user to jointly bring an infringement action, Or they could Sue independently of each other.

This legal question is a new one——So far, The first21The article has not been subject to judicial review. In interpreting "Geographical indication method" And related rules, The court held that, Products can only become geographical indications upon application by the registered owner. In addition, Even without authorized users, The registered owner may also renew the geographical indication, Or apply for additional protection, And receive a notification of the new authorized user.

therefore, Registered owners can act independently of authorized users, To obtain or continue to use the geographical indication label. though "Geographical indication method" The first68Article expressly provides, The authorized user shall file a lawsuit together with the registered owner, However, this only applies to certain cases mentioned in the above article.

Main conclusion

The Central High Court held that, The first21The first1paragraphain-item "and" The word must be understood to mean "or" . therefore, SWAIt is possible to Sue independently, Without requiring its authorized users to participate. therefore, The court overruled the district court's decision to authorize additional users to participate in the litigation in this case.

By clarifying these rights, The court answered key questions about who can Sue in a lawsuit for infringement of the rights of geographical indications in India: Registered owners and authorized users can bring lawsuits independently, The former need not involve the latter in the proceedings in order to sustain the proceedings. (Be compiled fromwww. worldtrademarkreview. com)

TRANSLATORS: Wang Dan　proofread: Liu Peng



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