1. Homonymous GIs can coexist when supported by longstanding historical use and adequate measures to safeguard consumers
2. The IPAB erred in granting Peru exclusive rights over the GI ‘Pisco’ without recognising Chile’s legitimate interests
3. Both ‘Peruvian Pisco’ and ‘Chilean Pisco’ could be registered with clear qualifiers

In a significant decision for geographical indication (GI) jurisprudence in India, the Delhi High Court has reaffirmed that homonymous GIs can coexist where justified by historical usage and consumer protection (Asociacion De Productores De Pisco AG v Union of India). In a writ petition filed by the Association de Productores de Pisco AG (Chile), the court upheld the right of both Chile and Peru to use the term ‘Pisco’ for their distinct alcoholic beverages, albeit with necessary qualifiers to prevent consumer confusion.

Background

Pisco is a grape-based brandy traditionally produced in Peru and Chile, known for its distinctive flavour and its integral role in classic South American cocktails.

The dispute arose when the Embassy of Peru applied for registration of the GI ‘Pisco’ in India for alcoholic beverages in Class 33. The Chilean association opposed the application before the registrar of trademarks and GIs, citing extensive historical and commercial use of ‘Pisco’ by Chilean producers for over a century.

After evaluating the evidence, the registrar recognised the concurrent use of the term by both countries and noted that, in various jurisdictions, including under multiple free trade agreements, both nations have historically coexisted in using the name ‘Pisco’. To safeguard consumer interests, the registrar permitted registration but mandated that the GI be registered as ‘Peruvian Pisco’.

The Embassy of Peru challenged this decision before the erstwhile Intellectual Property Appellate Board (IPAB), which set aside the registrar’s order and granted Peru exclusive rights over the GI ‘Pisco’, without the ‘Peruvian’ qualifier. Aggrieved, the Chilean association approached the Delhi High Court.

Arguments before the court

The petitioner’s case was as follows:

1. It has been producing and exporting Chilean Pisco since the 18th century, with evidence of international recognition, awards and GI registrations (e.g., in Costa Rica).
2. Chilean Pisco and Peruvian Pisco, though sharing historical roots, are distinct in taste, production methods and quality.
3. This is a classic case of a homonymous GI, as both nations legitimately use the term. Granting exclusive rights to Peru would overlook Chile’s legitimate, longstanding rights and would mislead consumers.

The respondent’s case was as follows:

1. The petition was delayed and should be dismissed.
2. Chile’s claim was invalid since no region called ‘Pisco’ exists in Chile, breaking the fundamental GI link.
3. Chile’s argument that the products are distinct contradicts the ‘shared region’ claim.
4. The registrar erred by adding the ‘Peruvian’ prefix, which is inconsistent with GI law.
5. No evidence shows that Indian consumers recognise two different Piscos.

Court’s findings

1. GIs are collective rights linked to a defined geographical area – unlike trademarks, where priority of use is relevant.
2. The evidence, including historic treaties, GI registrations abroad and international trade recognition, clearly established Chile’s longstanding use and reputation for ‘Pisco’.
3. Both parties have coexisted internationally under the ‘Pisco’ denomination, underscoring the legitimacy of the Chilean claim.
4. The court acknowledged that the region producing Pisco in Chile and Peru is not common or contiguous but accepted the concept of a ‘shared’ historical connection.
5. Crucially, the court recognised that homonymous GIs can legally coexist, provided that sufficient safeguards are in place to prevent consumer confusion. Therefore, the use of ‘Peruvian Pisco’ and ‘Chilean Pisco’ was justified.

The court concluded that the IPAB had erred in granting Peru exclusive rights without recognising Chile’s legitimate interests. To balance these rights while protecting consumers, it directed that:

1. the GI for Peru be modified to ‘Peruvian Pisco’; and
2. the stay on Chile’s GI application for ‘Chilean Pisco’ be vacated, allowing the registrar to process it as per the law.

Comment

The Delhi High Court’s ruling underscores that homonymous GIs can validly coexist when supported by longstanding historical use and adequate measures to safeguard consumers. By allowing both ‘Peruvian Pisco’ and ‘Chilean Pisco’ to be registered with clear qualifiers, the court has ensured that competing legitimate interests are recognised without creating consumer confusion.

‘This article first appeared in WTR Daily.’