The main legal point established in the judgment is the interpretation of the Trade Marks Act, 1999, and the application of legal principles to determine the protection/registration of geographical names as trademarks.

JUDGMENT :

Prathiba M. Singh, J.

CM APPL. 26997/2019

1. The short question in this case is as to whether the Petitioner can claim exclusive rights in respect of the word “GOA” for gin. The Petitioner and Respondent No.2 have had a long history of litigation since 2015. The Petitioner commenced use of the word “GOA” since the 1990s and in any event, since 2006, it has had extensive use of the mark in respect of gin. The Petitioner’s trademark applications Nos.628446 and 629645, both in class 33 were filed for a label mark, and when the Petitioner found that the Respondent No.2 was using the mark “GOA” for Gin and other alcoholic beverages, disputes ensued between the parties. Respondent No.2 then filed a rectification petition under the Trade Marks Act, 1999 seeking rectification/ modification of the Petitioner’s trademark registration Nos. 628446 and 629645. The IPAB, vide a detailed judgment dated 30th November, 2018 partially rectified the mark in the following terms:

“77. For all the reasons, the interest of public in the present case is overwhelming and outweighing which is compelling enough for this tribunal to lean towards the view relating to imposition of condition that "Registration of the label will not exclusivity of the Word Goa" as against holding that the word per se GOA can exclusively used by the respondent to the exclusion of others. This will also free the bona fide traders who are using GOA as a part of their label in respect of different goods like water, beer, whiskeys etc from the trammels of the oppositions which the respondent has instituted even though in all other respects the marks as a whole are different. Further, the imposition of this Condition and direction, will be in the interest of the purity of the register as it will make the practice of the trade marks office more consistent and will not give unnecessary exaggerated monopoly to the proprietor by reserving the familiar geographical name only to one entity

78. Lastly, There are judgments relied upon by the parties wherein the judgments cited by the applicant are mostly, no doubt, related old law which have been distinguished by the respondent to some extent. Likewise, the judgments are relied upon by the respondent wherein geographical names are allowed to be registered. All these judgments are not discussed at length in as much as the enquiry in each case is dependent upon the assessment of evidence with respect to ability of the geographical name serving as origin of the category of the goods. The landmark judgment relied upon by the respondent to urge that there is a change in law decided by ECJ in the case of Windsurfing(supra) has been discussed at great length and the conclusions and guidelines passed therein are analysed and reaffirmed and assessment has been made on the overall assessment of the geographical name as per the parameters laid down in Windsurfing (supra) and also legal factors emerging from the scheme of the Trade Marks Act, 1999. Therefore, the rest of the judgments which are based on more or less assessment of the evidence are factual in character and are distinguishable on the basis of the evidence available in those cases. The judgment passed in the case of Windsurfing case has also been approved by the courts in India including Bombay High Court in the case of Pidilite Industries Ltd. And Anr vs Vilas Nemichand Jain, 2015 (64) PTC 185 (Bom). In any case, the judgment is windsurfing (supra) is passed interpreting pari materia provision has direct bearing to the interpretation of the provision of section 9 (1) (b) involved in the present case.

Accordingly, We hereby pass the following directions: a) ORA no 271 &227/2015 are partly allowed to the extent that the impugned registration nos. 628446 &629643 in class =33 are put to the condition that the registration of the label mark shall not give any exclusivity of the word GOA only. The respondent no. 2 shall amend the register in relation to the above mentioned registered tr