In a time when cultural heritage and brand identity are increasingly intertwined, the significance and controversy surrounding India’s Geographical Indication (‘GI’) law has reached new heights. The dispute involving Prada and Kolhapuri Chappals arose when Prada presented sandals that closely resembled the GI-tagged Kolhapuri chappals, doing so, without proper attribution or engagement with Indian artisans. This incident led to significant backlash recently. In this heated context, the Delhi High Court’s decision dated 7 July 2025 in the case of Asociación de Productores de Pisco A.G. v. Union of India & Ors[1]. takes on greater importance. The Court conducted a thorough examination of the provisions regarding the prohibition of GI registration in specific instances, as well as the registration of homonymous GIs. This decision exemplifies how Indian courts are navigating the evolving landscape of GI law, aiming to safeguard traditional products while ensuring fair competition.
Introduction
In the matter of Asociación de Productores de Pisco A.G. v. Union of India & Ors., the Single Judge of the Delhi High Court reversed a decision made by the erstwhile Intellectual Property Appellate Board (‘IPAB’), which awarded a GI registration for Pisco to Peru. The Court examined significant issues related to the handling of homonymous GIs in India, confirming that the GI framework is sufficiently strong to safeguard multiple legitimate geographical indicators for the same product.
In this regard, a legal dispute arose between the Republics of Chile and Peru concerning an alcoholic drink known as Pisco, which is a liquor made from fermented grapes through traditional distillation methods. The Petitioner, a Chilean association representing Pisco producers, contested an IPAB ruling that awarded a GI registration for PISCO to Peru without any geographical qualifier. The primary question was whether the Geographical Indications of Goods (Registration and Protection) Act, 1999 (‘GI Act’) allows for the registration of homonymous GIs, which are names that sound or are spelled similarly but refer to products from distinct geographical areas. The Court's examination focused on the prohibition on misleading GIs as outlined in Sections 9(a) and 9(g) of the GI Act, along with the specific regulations for registering homonymous GIs as stated in Section 10 of the GI Act.
Brief background and facts
Asociación de Productores de Pisco A.G., the Petitioner in this case, is an association of producers of the alcoholic beverage Chilean PISCO in III and IV regions of Chile, which is in the river valley of Elqui, Limari, Huasco, Copiapo and Choapa. The producers of the Asociación de Productores de Pisco A.G’s have been producing and marketing Chilean PISCO for well over a century. Being so, Asociación de Productores de Pisco A.G filed a GI application for ‘Chilean PISCO’ on June 03, 2020, which was allotted application no. 689.
Embassy of Peru, the Respondent no. 4 earlier filed an application before the Registrar of Trade Marks & GI for grant of GI ‘PISCO’ on September 29, 2005 in respect of alcohol beverages in Class 33. In contrast, Asociación de Productores de Pisco A.G, filed a notice of opposition on 17 January 2007, against this application. Subsequently, by an order dated 3 July 2009, the Registrar of Trade Marks & GI determined that the evidence presented indicated that both Peru and Chile were utilizing the term ‘PISCO’, and that in certain countries, they had established parallel agreements regarding the use of PISCO. Consequently, application no. 43 for the registration of the GI PISCO, submitted by Embassy of Peru, was approved with a stipulation, registering it as ‘Peruvian PISCO’ to prevent any potential deception or confusion among consumers.
In response to the Assistant Registrar’s 3 July 2009 order granting the GI for ‘PISCO’ as ‘Peruvian PISCO,’ Embassy of Peru appealed to IPAB. In its decision dated 29 November 2018, the IPAB overturned the Registrar’s conditional registration and granted exclusivity for the GI under ‘PISCO’ to Embassy of Peru.
As a result, the current writ petition was filed to contest the order issued by the IPAB. Consequently, through an order dated 16 June 2020, the Single Judge of Delhi High Court issued an interim order, instructing the Registrar of Trade Marks & GI not to finalize any decisions regarding the Asociación de Productores de Pisco A.G’s GI application numbered 689 for the GI, ‘Chilean PISCO’. This order was reaffirmed by this Court in an order dated 22 March 2022, with an additional note that the GI awarded to Embassy of Peru for ‘PISCO’ will be contingent upon the resolution of the current writ petition.
Asociación de Productores de Pisco A.G’s contention
Peru and Chile have a shared history in the manufacturing of beverage PISCO in the Ica region of Peru, and Copiapo and Coquimbo regions of the Republic of Chile. There are seven kinds of PISCO which are manufactured across the regions, which are part of both Chile and Peru. PISCO has been manufactured for centuries in regions, which were part of present-day Chile and Peru. Definitive political boundaries came to be established only between 1880 and 1940. However, the production of PISCO continued between both countries.
Asociación de Productores de Pisco A.G presented the earliest documented evidence showing that PISCO production in Chile dates back to 1733. In that year, a public inventory of Latorre Ranch located in the Coquimbo region, listed several barrels of PISCO produced on the farm. This entry was the oldest confirmed instance of the term being used in a production context in Chile and demonstrated that PISCO existed there well before any equivalent records from Peru.
They also contended that the Chilean Pisco is a unique alcoholic drink that has already been granted GI protection in Costa Rica and recognized in multiple FTAs. They further claimed that the impugned order ignored key facts and was based on erroneous assumptions. Additionally, they also alleged that the Embassy of Peru falsely claimed that its GI application for ‘PISCO’ was accepted by multiple jurisdictions before WIPO, including Czech Republic, France, Italy, Portugal, Hungary, Slovakia, and Bulgaria. They also pointed out that both Chile and Peru produce different spirits using the same name, which comes from Quechua words like ‘Piscos’ and ‘Pisquillos’. According to Asociación de Productores de Pisco A.G, the order violated Sections 9 and 14 of the GI Act by not giving proper reasons for overturning earlier findings and wrongly applying trademark law concepts like ‘prior use’ and ‘dishonest adoption’ instead of the correct GI rules. They argued that since both countries use the name ‘Pisco’ legitimately, this is a case of homonymous GIs, not transnational ones. Therefore, as per Section 10 of the GI Act and Articles 22.3 and 22.4 of the TRIPS Agreement, both ‘Chilean Pisco’ and ‘Peruvian Pisco’ should be allowed with geographic labels to avoid misleading consumers. They also noted that Chilean Pisco has a larger global market share, and giving exclusive rights to Embassy of Peru would be unfair and harm competition.
Embassy of Peru’s contention
Embassy of Peru contended that there was a significant and unreasonable delay in the time taken by Asociación de Productores de Pisco A.G to approach the Court regarding the challenge to the 2018 order.
They further asserted that Asociación de Productores de Pisco A.G has explicitly acknowledged that Embassy of Peru possesses rights over the GI PISCO. Additionally, they argued that there is no geographical contiguity between the Pisco-producing areas in both nations, and that the soil and climatic conditions are distinct. Pisco is recognized as an 'appellation of origin' from Peru in numerous countries.
Moreover, Embassy of Peru claimed that the Chilean alcoholic beverage known as Pisco constitutes an illegitimate appropriation of the Peruvian Pisco. There is no 'common Pisco region' in Chile that guarantees uniformity and consistency in quality. Furthermore, Embassy of Peru indicated that there is no possibility of confusion or deception, as the spirits from Peru are marketed as 'Pisco' globally without any prefix. They also highlighted that González Videla, who later became the president of the Republic of Chile, advocated for a law in 1936 to rename a city from 'La Union' to 'Pisco Elqui', in order to unlawfully capitalize on the reputation of the Peruvian beverage, asserting that it is undisputed that Peru is the origin of this beverage.
Analysis and decision
The Court initially differentiated the principles of GI law from those of trademark law, observing that the IPAB had mistakenly utilized the trademark concept of ‘prior use’ to ascertain the origin of the GI. By referencing Tea Board India v ITC Ltd[2]., the Court clarified the distinction between intellectual property protection under the Trade Marks Act of 1999 and the GI Act. This clarification aimed to eliminate the significance of the ‘prior use’ element, which had been incorrectly applied by the IPAB in establishing the geographical origin of Pisco.
The Court referred to FTAs to observe that, although there is a difference in the legal weight between rights established through political instruments and those created by statute, it is still appropriate to take judicial notice of the former. This was done to demonstrate that the international community acknowledges parallel rights between the two countries and recognizes the Chilean beverage as Pisco as well.
In accordance with Section 9(a) of the GI Act, which forbids the registration of indications that may be misleading or confusing, the Court determined that Pisco is produced in various geographical areas in both Peru and Chile. There is also a notable diversity in the types of grapes used, the distillation methods, and other related processes. Therefore, the issuance of a blanket GI designation of ‘Pisco’ to Embassy of Peru, lacking any geographical identifiers, would contravene Section 9(a) of the GI Act.
The Court determined that the existence of a city named Pisco in Peru is not pertinent to the investigation, given that not all Pisco produced in Peru originates from that location. The Court also held that the term has zoological and ethnographic roots in the Quechua language.
Furthermore, the Court also determined that the appropriate legal avenue was via Section 10 of the GI Act, which clearly permits the safeguarding of homonymous GIs, referencing the domestic instances of ‘Banglar Rasogolla’ and ‘Odisha Rasagola’ as a precedent for permitting such co-existence with geographical identifiers. Furthermore, regarding homonymous GIs for wines, Article 23.3 of TRIPS ensures protection for each designation. Considering that Chile and Peru both produce an alcoholic beverage known as Pisco, the inclusion of the prefixes (Peruvian and Chilean) would align with Section 10 of the GI Act.
The Court harmoniously interpreted Sections 9(a), 9(g), and 10 of the GI Act, observing that granting Peru an exclusive right over Pisco as a GI would not only lead to consumer confusion, considering that the Chilean drink is also named Pisco, but would also negatively impact the rights of Chilean producers.
Accordingly, the Court set aside the IPAB’s order and directed that the GI granted to Embassy of Peru to be modified as ‘Peruvian PISCO’. Consequently, the Court held that the entry no. 43 in favor of Embassy of Peru dated 17 June 2019, for PISCO in the Register of the Geographical Indications, be modified to include ‘Peruvian’ before PISCO. The Court also lifted the stay, as granted vide order dated June 16, 2020, on the GI application no. 689 for the GI Chilean PISCO filed by Asociación de Productores de Pisco A.G on June 03, 2020.
Conclusion
The Court ruled that shared history cannot be monopolised. Both Peru and Chile have legitimate claims to produce ‘PISCO’, and the law allows the same name to be used by different regions as long as consumers are not misled. The Court applied this principle under Section 10 of the GI Act, directing that both ‘Peruvian PISCO’ and ‘Chilean PISCO’ be registered and coexist, with clear geographic labels. This decision effectively counters claim of one nation monopolizing this shared tradition and instead champions fairness, clarity, and mutual respect in GI regime.
[The author is an Associate in IPR practice at Lakshmikumaran & Sridharan Attorneys, New Delhi]
[2] SCC OnLine Cal 1083
