In a significant ruling for the Geographical Indication, the Patan High Court has overturned the Department of Industry's (DOI) decision and favored the Scotch Whisky Association in a dispute against Highland Distillery. Highland Distillery, a local liquor company, applied for the registration of the "Highlander & (logo)" trademark under class 33 in Nepal without specifying the goods. 
Upon the trademark publication in the Industrial Property Bulletin, the Scotch Whisky Association claimed that the applied trademark impacts "HIGHLAND", a protected geographical indication for scotch whisky. Scotch whisky is primarily produced in four regions of Scotland: Highland, Lowland, Islay, and Speyside. ‘Highlands’ represent the high mountain regions of Scotland, while ‘Highlander’ represent a person who comes from the Scottish Highlands. The association filed an opposition citing potential consumer confusion over the Geographical Indication due to the application of Highlander trademark in class 33. The DOI dismissed the opposition, asserting that consumers were unlikely to be confused, as the complainant failed to establish a clear connection between "Highlander" and the geographical indication of Scotch whisky.
Dissatisfied with the decision, the Scotch Whisky Association filed an appeal before the Patan High Court. The appellants argued that "Highlander" is a geographical indication for Scotch whisky, and the focus of the matter should be on geographical indications rather than trademarks. The appellants claimed that the term "HIGHLAND" is a geographical indication for whisky manufactured in Scotland and cannot be registered by any other company which is not a domicile of the Highland region of Scotland. After hearing arguments from both parties, the Patan High Court issued a decision in favor of the Scotch Whisky Association, considering Scotch Whisky's well-known geographical indication worldwide. The court criticized the DOI for delving into matters beyond the case context, specifically questioning whether "Highlander" constitutes a well-known mark, without adequately considering the geographical indication. Furthermore, the court noted that this decision was not in accordance with Article 22 and 23 of the TRIPS Agreement and the Consumer Protection Act of 2019. 
The Patan High Court emphasized Article 10 bis of the Paris Convention that mentions all members shall be obliged to ensure effective protection against unfair competition, that may mislead the consumers. The Patan High Court's ruling aligns with international standards, emphasizing the need for effective protection against unfair competition. Thus, the decision serves as a pivotal rule upholding consumer right and maintaining the integrity of geographical indications.

Scotch Whisky Association vs. Highland Distillery, decision issued by Patan High Court.

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