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 lengt 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) [LQ/BomHC/2015/2349] . 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 trade marks of the respondent no. 1 forthwith.

b) The respondent no. 2 is directed to issue conditions in accordance with directions contained in this judgments for all matters/ applications which are considered by the trade mark office in respect of goods relating to alcoholic beverages after passing of this judgment relating to the labels and word marks wherein the word GOA forms one of the feature”

2. Mr. Sagar Chandra, ld. counsel appearing for the Petitioner submits that the impugned order has affected the Petitioner‟s statutory rights immensely inasmuch as there are several other third parties who have started misusing the order in effect to mean that the word “GOA” has become publici juris.

3. He relies upon the findings of the IPAB to the effect that the Petitioner‟s rights for passing off have in fact been saved by the IPAB, however, the same would not be sufficient, as statutory rights for infringement have in effect been negated. On the other hand, on behalf of Respondent No.2 - Mr. Sachin Gupta, ld. counsel submits that the IPAB has arrived at a conclusion in a detailed judgment after going through various existing trademarks for the word “GOA” and other beverages. He submits that the word “GOA” cannot be monopolised in respect of alcoholic beverages, let alone gin. Reliance is placed on the various trademark applications/registrations which were noted before passing the impugned order.

4. The law in respect of marks containing geographical names has been considered by various courts in India. In one of the earliest judgements, the High Court of Calcutta in Imperial Tobacco Co. of India Ltd. v. Registrar of Trade Marks and Ors, AIR 1968 Cal 582 [LQ/CalHC/1968/139] , considered whether the mark SIMLA in a label form with the device of snow-clad hills ought to be given registration. The mark was a composite mark, described in the judgement in para 11, as under:-

"11. The trade mark "Simla" with the label is composite in character. Its essential feature is the word Simla. Simla" is neither an invented word nor is it a word having a dictionary meaning. It is a well known hill-station of India. Its geographical signification is, therefore, plain and unequivocal. The snow-clad hills in outline on the label makes the geographical significance inescapable. The appellants whole case now rests on 3 years prior use of this trade mark before the date of the application for registration with the assertion that the geographical name has acquired distinctiveness and so qualified for registration."

The Registrar of Trademarks had accepted the large-scale sales and popularity of the mark, however, he came to the conclusion that it would be “unwise” to allow registration, as independent evidence had not been proffered. The Calcutta High Court, in a detailed judgment, which has analysed the entire English law on this aspect including the Yorkshire Case(1954) 71 RPC 150, London Candles case (1909) 26 RPC 797 etc came to the conclusion that whenever there are marks which include geographical names, “ careful scrutiny” is required.

5. In Manipal Housing Finance Syndicate Ltd. and Ors. v. Manipal Stock and Share Brokers Ltd. and Ors., [1999] 98 Comp Cas 432(Mad), the Madras High Court again considered the law relating to registration of descriptive marks, including marks containing geographical names. The court observed as under:-

"30. The issue that arises for consideration is as to whether the plaintiffs can claim exclusive right to use the name "Manipal" which is admittedly the name of a fairly well known town in South India and as to whether the plaintiffs have the exclusive right to describe themselves as "Manipal group".

31. The commercial use of geographical names is universally well known. People and business enterprises identify themselves with the place from which they hail, live in or carry on business. Many a business enterprise uses the name of the city, town, region, or country as part of its business or corporate name. Monopoly over the use of geographical name is not the rule, but a rare exception to the rule.

32. In any large city are to be found more than one business establishment whether or not carrying on the same trade, using the name of the town or city as part of its business name. In a large city like Madras, there are several large companies – well known nationally - who use the name of the city as part of their corporate name. Geographical names are invariably and subject to rare exceptions public juris - are in the public realm available for use by any one choosing to adopt it as part of the name of the business enterprise.

33. Any exception to this rule must truly be an exception. It is only in a rare case where the name has been used very extensively for a long period, is so well known in the market as to be identified in the public mind with the product or service rendered by the business enterprise, that the court may consider granting injunctive relief to a plaintiff.”

The Court, after analysing the evidence, held that the Plaintiffs had failed to establish that the word „Manipal‟ as part of the corporate name of the Plaintiffs, had acquired extensive goodwill and acquired secondary meaning so as to be exclusively associated with the Plaintiff companies. However, whenever geographical names are adopted as part of the trading style or as marks, the Court felt that there was a huge “risk” which was involved in the same. The rights of the Plaintiffs have to be balanced with the rights of such persons who may wish to use the same name subsequently. Accordingly, the Court held that since secondary meaning had not been established, the injunction was not liable to be granted.

6. In Hi-Tech Pipes Ltd. v. Asian Mills Pvt. Ltd, 2006(32) PTC 192(Del), a ld. Single Judge of this Court, while considering the trademark „Gujrat‟ in respect of pipes, observed that the trademark „Gujrat‟ had acquired secondary meaning and had come to be exclusively associated with the Plaintiff. Thus, the interim injunction was granted.

7. In Hi-Tech Pipes Ltd. v. Asian Mills Pvt. Ltd, the decision in Geepee Ceval Proteins and Investment Pvt.Ltd v. Saroj Oil Industry 2003 (27) PTC 190 [LQ/DelHC/2003/678] was also considered by the Court. In Geepee Ceval Proteins , a ld. Single Judge of this Court considered the mark „Chambal’ in respect of oil, and held that the same was capable of becoming a trademark and an action for passing off based on the said mark was maintainable.

8. In Sahkar Seeds Corporation V. Dharti Seeds, 2017 (71) PTC 77 (Guj) [LQ/GujHC/2017/353] , the Gujarat High Court was considering the trademark Vadhiyari which was a name denoting the Vadhiyar religion in Gujarat. The Gujarat High Court held that there was nothing on record to suggest that the Vadhiyar region was known for manufacturing of seeds of different types of grains. The observations of the Court are as under:-

“With regard to the contention raised by Mr. P.C. Kavina about the use of the word “VADHIYAR” which may suggest geographical region, is concerned, I am of the opinion that “VADHIYAR” might be an area of State of Gujarat which is known as per its geographical situation, but there is nothing on record to suggest that this area is known for manufacturing of seeds of different types of grains. The seeds manufactured in Vadhiyari area neither create some impression about the qualities, reputation nor other characteristic which attribute to its geographic origin. It is difficult to accept at this stage that the grant of "VADHIYARI BIJ" as Trade Mark by the authority to original plaintiff would mislead the public about the product. When the registration of the "VADHIYARI BIJ" was granted to the plaintiff, it is difficult to accept that the authority has not considered the same before issuing the Registration.”

The High Court confirmed the injunction granted against the Defendant protecting the mark Vadhiyari.

9. A perusal of the various judgements cited above, as also other cases in respect of word marks such as Bikanerwala Bikanervala vs New Bikanerwala (2005) 30 PTC 113 (Del) [LQ/DelHC/2005/164] , Mysore Sarees Mysore Saree Udyog v. Mysore Silk Udyog 1999 PTC (19) 389 (Karnataka) etc. would show that the law relating to the geographical names can be summarised as under:-

i. The mere inclusion of a geographical name as part of a trademark would not disentitle the mark from registration/protection. If the mark includes a geographical name, the said mark can be protected / granted registration.

ii. The standard of proof required to establish that a geographical name can be registered/ protected would be high. Mere evidence of sale and advertising would not be sufficient.

iii. Trademark applicants/owners would need to establish something more i.e. that the mention of the mark immediately connotes the acquisition of secondary distinctiveness, which would be a sine qua non for protecting such a mark.

iv. The Court/Registrar while considering a mark consisting of a geographical name can apply various factors to determine whether the mark may be protected/registered, which factors would include:

(a) Whether the geographical name has some connotation with the products in question for eg., describing a feature or purpose of use; characteristic of the geographical location; association of some kind between the product and the geographical location; - OR is the same an arbitrary adoption;

(b) Whether the geographical name denotes the character or quality of the products; (c) The extent of use of mark, and the independent reputation/goodwill of the mark;

(d) Whether granting of registration/protection would create an unfair monopoly of a commonly used name;

(e) Whether other businesses / competitors would be prevented from using the mark/name in a descriptive sense.

(f) Whether the mark/name itself does not have any reputation prior to the usage by the applicants as a mark and hence monopoly can be granted;

(g) Whether the usage of mark/name would need to be restricted to label/ logo forms so that non-descriptive use of the said name can be permitted to the third parties;

(h) The association in the mind of the public/relevant class of consumers/ relevant trade channel of the geographical name with the applicants."

The above-mentioned factors are not exhaustive in nature. Above all, the Registrar/ Court would exercise discretion in determining whether exclusivity/monopoly can in fact be granted.

10. In the facts of the present case, the question as to whether a geographical word such as “GOA” is entitled to be registered in favour of a particular party, is to be decided in this petition. Geographical words would stand on the same footing as personal names and other descriptive words, which can acquire secondary meaning owing to long and continuous usage. The pendency of this petition cannot be permitted to be used by third parties to misuse the mark during the interregnum and thus dent the Petitioner‟s rights. When this matter was listed on 30th May, 2019 the following interim order was passed by the ld. Single Judge:

“2. Any action taken pursuant to the impugned judgment of the Board will be subject to the outcome of this petition.

3. Mr. Sagar Chandra, learned counsel for the petitioner states that there are certain other applications pending with regard to word mark "GOA". Those applications will not be decided until the next date of hearing.”

11. Submissions have been heard in the stay application. This Court is of the opinion that there are various judgments of this Court and other High Courts, which have protected geographical words as trademarks/marks. However, on the legal and factual issues, detailed arguments, would still be required to be heard. Prima facie this Court is of the opinion that partial rectification should not result in multiple parties commencing use of the mark “GOA” on the strength of the impugned judgment. Accordingly, the stay application is disposed of with the observation that the impugned order would not come in any way of the Petitioner ascertaining its rights in respect of the word “GOA” as well as the GOA label qua any third party except the Respondent No.2. The IPAB judgment would not, in any manner, be a justification for a third party to commence or continue use of the mark “GOA” for alcoholic beverages. The rights and remedies of the Petitioner against any such third party/ies is left open. With these observations, the stay application is disposed of. The present order is only a prima facie view taken at this stage and would not bind the ultimate decision in the writ.

W.P.(C) 6340/2019

12. List for hearing on 28th August, 2020.