ORDER

Heard finally, with the consent of the parties.

1. The Petitioner- Scotch Whisky Association (hereinafter ‘The Petitioner’) in the present case lays a challenge to the order dated 28.10.2021 passed in CS no. 07/2020 by the Commercial Court in District Indore, through which the application under Order VII Rule 11 (hereinafter O7/R11) has been partly allowed holding the suit to be maintainable only after impleadment of “Authorised User” (hereinafter ‘AU’) in terms of the mandate of Section 21 of the Geographical Indications of Goods (Registration and Protection) Act, 1999 (hereinafter ‘GI Act’).

2. The petitioner by filing the present petition under Article 227 of the Constitution of India, pleads that being a “Registered Proprietor” (hereinafter ‘RP’) of the Scotch Whisky Geographical Indication (hereinafter ‘GI’) has an independent right and entitlement to maintain the suit for infringement of the GI in his own independent capacity.

3. The petitioner mentions itself to be a company incorporated under laws of the United Kingdom with its registered office at Scotland, UK and legal representatives in India, Mr. Sunil MB Dutta has been authorized to carry out all functions on behalf of petitioner. The petitioner states itself to be an association of 56 distillers, producers, dealers, blenders, owners of proprietary brand or brands, brokers or exporters of Scotch Whisky, which is manufactured in the United Kingdom, especially Scotland. It is further mentioned that additional protection has been granted by the Government of India w.e.f 28.11.2011 under Section 22(2) of the GI Act.

4. Petitioner had filed a GI Application no. 151 as the RP applicant for a grant of GI for Scotch Whisky earlier on 5th January 2009, on which the aforesaid notifications granting the status of GI to Scotch Whisky came to be issued, first in time being on 23rd September 2010. Thus petitioner is argued to be the RP, on whose application the 'Scotch Whisky' (hereinafter ‘SW’) attained the GI status in the country. Referring to the Memorandum and Articles of Association of petitioner, a company incorporated in April 1960 at Edinburgh, UK. It is stated that the objectives of the association of the company are to protect and promote the Scotch Whisky trade at home and abroad; and to protect and preserve the Scotch Whisky business in the UK and abroad.

5. It is thus stated that being the original applicant as RP, on whose application the GI tag was granted by the Central Government to Scotch Whisky, the suit for infringement of GI at their instance under Section 21 is clearly maintainable and the petitioner has been incorrectly directed to be impleaded or proceed with the suit only after the impleadment of registered AU of the Scotch Whisky under the GI Act.

6. The original suit before the Trial Court has been filed seeking essentially a restraint order against the defendants or any of their agents for manufacturing, bottling, selling or in any manner marketing any Whisky which is not Scotch Whisky under the mark ‘London Pride’ or any other words, names, business names, etc. It is further prayed in the original suit for restraining the defendants from manufacturing, importing, exporting, stocking or dealing in any manner with any whisky being not Scotch Whisky by using the device of Union Jack or any such other image/impression. The suit has been filed through the authorized signatory having its registered office in India.

7. J.K. Enterprises (hereinafter ‘JKE’) is a partnership firm, with Defendant No. 2 & 3 as its partners, having its Head Office in Indore. Its manufacturing and packaging unit is situated in District Dhar and Indore. Other defendants are also engaged in the business of manufacturing and trading of whisky, being companies incorporated under the Companies Act. They are stated to be marketing and selling ‘London Pride’ whisky, which gives rise to the cause of action in the plaint.

8. The following issues arise for consideration in the present matter