'Pisco' and Geographical Indications – A recent judicial determination

Factual Matrix

The South American Nation of Peru, through its Embassy in New Delhi, filed an application under Section 11 of the Geographical Indication of Goods (Registration and Protection) Act, 1992[1] (‘Act’), seeking registration of the Geographical Indication (‘GI’) PISCO for an alcoholic beverage manufactured in Peru. The Asociacion De Productores De Pisco A.G. (‘ADP’) filed an opposition against Peru’s application.

The Assistant Registrar of Trade Marks, vide order dated 3 July 2009, granted registration of the GI ‘PERUVIAN PISCO’ in favour of Peru.

Aggrieved by the order, the Embassy of Peru (‘Peru’) preferred an appeal before the Intellectual Property Appellate Board (‘IPAB’), which after due consideration ruled vide an Order dated 29 November 2018, in favour of Peru, holding that it was entitled to registration of the standalone GI PISCO for the alcoholic beverage manufactured by it.

Aggrieved by this order of the IPAB, ADP filed an appeal challenging this finding. Subsequently, ADP also filed a GI application for registration, claiming that it ought to be assigned the GI ‘CHILEAN PISCO’, while Peru’s entitlement, if any should be confined to the geographically qualified ‘PERUVIAN PISCO’.

The Ld. Single Judge, vide judgement dated 7 July 2025, set aside the order passed by the IPAB and granted the GI registration to Peru for the GI ‘PERUVIAN PISCO’. In doing so, the Single Judge rejected Peru’s claim to the standalone GI ‘PISCO’ and confined its entitlement to the geographically qualified indication. [Read an authored article on the Single Bench decision here.] Aggrieved by the said judgement, Peru filed the Letters Patent Appeal before the Division Bench challenging this judgment.

Is Peru entitled to the GI registration of PISCO without the prefix?

A reference was made to Section 9 of the Act[2] to decide the entire dispute, as the said provision sets out the absolute grounds on which registration of a geographical indication may be refused. The Hon’ble Division Bench of the Court affirmed that, even if the criteria laid down in Section 2(1)(e) of the Act[3] is satisfied, namely the establishment of a geographical nexus between the goods and their place of origin, there is no absolute right to the grant of a GI. Even where an applicant is able to demonstrate that the indication identifies goods as originating from a particular territory on account of specific quality, reputation or characteristics attributable to that geographical environment, such entitlement remains subject to the statutory prohibitions enumerated under Section 9 of the Act.

It was apparent that, since PISCO had long-standing use in Chile for an alcoholic beverage, the grant of the GI PISCO exclusively in favour of Peru would result in confusion among the consumers. However, the claim of long-standing use of PISCO for alcoholic beverages manufactured in Chile was not disputed by Peru, and was solely contended to be dishonest. The IPAB referred to Peru’s case in its order, encompassing historic data showcasing the antiquity and use of PISCO in Peru and the method of manufacturing therein. Peru argued that in 1936, Chile had artificially renamed the town La Union as ‘Pisco Elqui’. The Hon’ble Court did not have any material to sustain the findings of the IPAB, as the order did not provide any reasoning pertaining to submissions being found substantial or any discussion pertaining to Chile’s stand.

Peru relied upon memoirs of Gabreil Gonzales Videla, President of Chile from 1946 to 1952 which asserted that the name was changed to export Chilean Pisco to the United States of America. However, Peru admitted that the same was being traded even before 1964.

However, the Hon’ble Court was not convinced with Peru’s allegation and considered it to be relevant for the purpose of Section 9(a) of the Act. The material established by the Ld. Single Judge demonstrated that the alcoholic beverage PISCO was being manufactured in Chile for nearly a century. The Hon’ble Court was of the view that Peru’s allegation of dishonesty on part of Chile in adopting the name PISCO for alcoholic beverages was bereft of credible supportive evidence, and therefore, Peru’s submission was rejected.

The Court was of the opinion that FTA’s are not solely for the purpose of establishing goodwill and reputation of GI’s in India, but also to establish GI as an indicator of origin, identifying goods of a particular country, region or territory for which the GI is intended to be registered.

The Court opined that neither Peru nor Chile should be granted the GI PISCO because, if the GI PISCO were to be used by Peru, it would create confusion among the consumers, as they may encounter CHILEAN PISCO and presume that it is PERUVIAN and vice-a-versa.

Given that the spirituous liquors in question differ in quality and character, the Registrar of GI in India would be in breach of Section 9(a) of the Act, if exclusive rights over the GI PISCO were granted either to Peru or Chile. Accordingly, Peru’s application for the standalone GI PISCO could not have been granted. Since the spirituous liquors were being marketed as ‘PISCO’ in both Peru and Chile, where both are materially distinct in quality and character, thereby, the conferral of exclusive rights over the standalone GI would not only go against Section 9(a) of the Act, but could give rise to consumer confusion as well.

The next question before the Hon’ble Court was whether the use of standalone GI PISCO by Peru would attract Section 9(g) of the Act. The Hon’ble Court was of the opinion that it would not because there was no doubt regarding Peru’s use of PISCO as the goods bearing the indication originate from its territory. Therefore, if Peru uses the GI PISCO for alcoholic beverages manufactured within its territory, it would not be misrepresenting the origin of the goods or suggest that PISCO originates elsewhere.

Accordingly, Peru cannot be denied registration of the GI PISCO based on Section 9(g) of the Act, given that it’s use would not be in relation to alcoholic beverages originating from another country, region or locality. Nonetheless, the application of Section 9(a) of the Act remains undisputed.

With respect to the relevance of historical material, such as the conflict between Peru and Chile, the origin of the name PISCO, and its method of preparation in Peru, the Hon’ble Court was not persuaded that these factors had any bearing on the present controversy. The Hon’ble Court observed that had Chile not been manufacturing or producing alcoholic beverage under the name PISCO, Peru would have been entitled to the registration of GI for its products.

The Hon’ble Court further clarified that prior users of a mark, for which GI registration is sought, is not a determinative factor under the GI Act. Such considerations more appropriately form factors of entitlement for registration under the Trade Marks Act, 1999.

For the purpose of GI registration, the essential requirements are set out in Section 2(1)(e) of the Act, whereas the filing of applications of GI is stipulated under Section 11 of the Act. Further, the procedure governing such registration is prescribed under Chapter II of the GI Rules. In the present case, Rule 25[4] was considered particularly significant.

By virtue of the definition, GI must function as an indication that links the goods to a specified region, locality, territory or country for which registration is sought. Section 11 of the Act read with Rule 25 specifies the particulars that an applicant must furnish while seeking registration of GI. These particulars enable the Registrar to assess whether the indication satisfies the essential ingredients of a GI as defined under this Act. A GI that fulfils these requirements is entitled to registration under the GI Act, subject to the prohibitions contained in Section 9 of the Act.

Both Peru and Chile would in principle, be entitled to exclusive registration of the GI PISCO for alcoholic beverages produced in their respective territories, if Section 9 of the Act, were to be disregarded. However, prima facie by virtue of Section 9(a) of the Act, neither Peru nor Chile is entitled for registration of standalone GI PISCO.

In light of this, the Hon’ble Court held that it was unnecessary to examine the submissions advanced by Peru or Chile concerning the historical origin of the term PISCO or the manner in which it came to be associated with alcoholic beverages produced in their territories.

As per the impugned judgement, both Peru and Chile were considered entitled to register the GI PISCO as a homonymous GI, subject to the addition of the appropriate geographical prefixes. However, the issue before the Ld. Single Judge pertained solely to Peru’s application and the impugned judgement permitted registration of the GI PISCO with the geographical identifier PERUVIAN.

The Hon’ble Court concurred with the principle that a homonymous GI can be registered only upon a specific application seeking such registration. A reading of Section 10 of the Act[5] and Rule 32(1)(6)(h)[6], makes it clear that registration of homonymous GI is contingent upon an application seeking such registration. Furthermore, for such a registration, there should be an existing registered GI that is homonymous to the one sought to be registered.

In the present case, as no GI for PISCO existed at the time Peru applied for its registration, the question of treating it as a homonymous GI does not arise. Consequently, the Hon’ble Court disagreed with the Ld. Single Judge’s finding that Peru could be granted registration of the GI PISCO as a homonymous.

Further, the Hon’ble Court disagreed with the impugned judgement that upheld the grant of GI along with the geographical identifier, PERUVIAN PISCO in favour of Peru as a homonymous GI.

However, the Hon’ble Court agreed that the Ld. Single Judge was within the ambit of their powers to grant registration to Peru for PERUVIAN PISCO in accordance with Section 11(6) of the Act. The registration of GI is governed by Section 16 of the Act[7]. Upon conjoint reading of Section 11 and 16 of the Act, the Hon’ble Court was of the view that the Ld. Single Judge acted within the jurisdiction in upholding the decision of the Ld. Assistant Registrar to dispose the application filed by Peru by granting registration of the GI PERUVIAN PISCO.

The Hon’ble Court observed that Peru was not inclined to remain the registered proprietor of the GI PERUVIAN PISCO. In view of this, the Court clarified that the present judgement would not preclude Peru from taking appropriate steps in accordance with law to surrender the said registration. Hence, the Hon’ble Court reaffirmed that Peru cannot be granted registration of the standalone GI PISCO. The decision thus strikes a measured balance between statutory compliance and judicial restraint, recognising the limits of judicial adjudication with respect to GI registration. In doing so, it firmly decides on the controversy surrounding proprietary claims over the standalone GI ‘PISCO’ within the existing statutory framework.

Insights

The case of Embassy of Peru v. Union of India & Ors.[8] brings clarity to the scope and limitation of GI registration under the Act. Firstly, it reinforces that the grant of a GI is not merely contingent upon establishing a geographical nexus but is decisively constrained by the absolute grounds of refusal, particularly the likelihood of consumer confusion under Section 9(a) of the Act.  In effect, the Hon’ble Court delineated the boundaries between entitlement of registration and the statutory prohibition contained in Section 9 of the Act, emphasizing that geographical linkage cannot override the absolute grounds of refusal. Secondly, the ruling also clarifies that prior use, which is central to trademark jurisprudence, has limited relevance under the GI ambit. Thirdly, the Hon’ble Court by priortizing commercial realities over historical claims of origin signaled that GI protection is fundamentally consumer-centric rather than product-centric. Lastly, the Court’s adoption of a strict approach to homonymous GIs, makes it clear that GI protection is not automatic and can only be claimed through a specific application where an existing registered GI already exists, thereby emphasizing the need to adhere to procedural rules.

Therefore, the recognition that PERUVIAN PISCO could be validly registered reflects a balanced approach, one that preserves geographical authenticity while preventing consumer confusion, while effectively setting out as a precedent for future disputes involving GIs particularly where multiple jurisdictions assert competing claims over a shared indication.

This decision affirms that GI protection under the Indian law is rooted not merely in historical origin, but in a careful assessment of the statutory provisions and limits, and consumer perception, based on market realities. By prioritising consumer confusion and procedural rigor over exclusivist claims of origin, the Hon’ble Court adopted a disciplined and balanced approach to GI adjudication. This judgement sets a precedent for future disputes involving GIs particularly where multiple jurisdictions assert competing claims over a shared or contested indication.

[The author is a consultant in IPR practice at Lakshmikumaran & Sridharan Attorneys]

[1] 11. Application for registration.—(1) Any association of persons or producers or any organisation or authority established by or under any law for the time being in force representing the interest of the producers of the concerned goods, who are desirous of registering a geographical indication in relation to such goods shall apply in writing to the Registrar in such form and in such manner and accompanied by such fees as may be prescribed for the registration of the geographical indication. (2) The application under sub-section (1) shall contain— (a) a statement as to how the geographical indication serves to designate the goods as originating from the concerned territory of the country or region or locality in the country, as the case may be, in respect of specific quality, reputation or other characteristics of which are due exclusively or essentially to the geographical environment, with its inherent natural and human factors, and the production, processing or preparation of which takes place in such territory, region or locality, as the case may be; (b) the class of goods to which the geographical indication shall apply; (c) the geographical map of the territory of the country or region or locality in the country in which the goods orginate or are being manufactured; (d) the particulars regarding the appearance of the geographical indication as to whether it is comprised of the words or figurative elements or both; (e) a statement containing such particulars of the producers of the concerned goods, if any, proposed to be initially registered with the registration of the geographical indication as may be prescribed; and (f) such other particulars as may be prescribed. (3) A single application may be made for registration of a geographical indication for different classes of goods and fee payable therefor shall be in respect of each such class of goods. (4) Every application under sub-section (1) shall be filed in the office of the Geographical Indications Registry within whose territorial limits, the territory of the country or the region or locality in the country to which the geographical indication relates is situated: Provided that where such territory, region or locality, as the case may be, is not situated in India, the application shall be filed in the office of the Geographical Indications Registry within whose territorial limits the place mentioned in the address for services in India as disclosed in the application, is situated. (5) Every applications under sub-section (1) shall be examined by the Registrar in such manner as may be prescribed. (6) Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modification, conditions or limitations, if any, as he thinks fit. (7) In the case of refusal or conditional acceptance of application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.

[2] 9. Prohibition of registration of certain geographical indications.—A geographical indication— (a) the use of which would be likely to deceive or cause confusion; or (b) the use of which would be contrary to any law for the time being in force; or (c) which comprises or contains scandalous or obscene matter; or (d) which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or (e) which would otherwise be disentitled to protection in a court; or (f) which are determined to be generic names or indications of goods and are, therefore, not or ceased to be protected in their country of origin, or which have fallen into disuse in that country; or (g) which, although literally true as to the territory, region or locality in which the goods originate, but falsely represent to the persons that the goods originate in another territory, region or locality, as the case may be, shall not be registered as a geographical indication.

[3] 2. Definitions and interpretation.—(1) In this Act, unless the context otherwise requires,—

(e) ‘geographical indication’, in relation to goods, means an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.

[4] 25. Statement of user in applications. An application to register a geographical indication or as an authorised user shall, contain a statement of the period during which, and the person by whom it has been used in respect of the goods mentioned in the application. The applicant shall file an affidavit testifying to such user with exhibits showing the geographical indication as used, the volume of sales under that geographical indication , the definite territory of the country, region or locality in the country to which geographical indication relates and such other particulars as the Registrar on perusal of the application may call for from the applicants

[5] 10. Registration of homonymous geographical indications.—Subject to the provisions of section 7, a homonymous geographical indication may be registered under this Act, if the Registrar is satisfied, after considering the practical conditions under which the homonymous indication in question shall be differentiated from other homonymous indications and the need to ensure equitable treatment of the producers of the goods concerned, that the consumers of such goods shall not be confused or misled in consequence of such registration.

[6] 32(1). Content of application: Every application for the registration of a geographical indication shall be made in the prescribed forms and shall contain the following:

(6) The statement contained in the application shall also include the following: 

(h) Where the geographical indication is a homonymous indication to an already registered geographical indication, the material factors differentiating the application from the registered geographical indications and particulars of protective measures adopted by the applicant to ensure consumers of such goods are not confused or mislead or confused in consequence of such registration;

[7] 16. Registration.—(1) Subject to the provisions of section 12, when an application for registration of a geographical indication has been accepted and either— (a) the application has not been opposed and the time for notice of opposition has expired; or (b) the application has been opposed and the opposition has been decided in favour of the applicant, the Registrar shall, unless the Central Government otherwise directs, register the said geographical indication and the authorised users, if any, mentioned in the application and the geographical indication and the authorised users when registered shall be registered as of the date of the making of the said application and that date shall, subject to the provisions of section 84, be deemed to be the date of registration. (2) On the registration of a geographical indication, the Registrar shall issue each to the applicant and the authorised users, if registered with the geographical indication, a certificate in such form as may be prescribed of the registration thereof, sealed with the seal of the Geographical Indications Registry. (3) Where registration of a geographical indication is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice to the applicant in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice. (4) The Registrar may amend the register or a certificate of registration for the purpose of correcting a clerical error or an obvious mistake.

[8] (LPA 577/2025 & CM APPL, 57234-39/2024)