Prof Adv Ganesh S Hingmire and Ors. vs Prada Group and Ors.

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IN THE HIGH COURT OF JUDICATURE AT BOMBAY CIVIL APPELLATE JURISDICTION

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PUBLIC INTEREST LITIGATION NO. 72 OF 2025

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Prof. Adv. Ganesh S. Hingmire And Ors. ….Petitioners

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: Versus :

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PRADA Group and Ors. ….Respondents

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Mr. Ganesh S. Hingmire with Ms. Vrushali L. Maindad and Mr. Prasad Sapate, for the Petitioner.

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Mr. Ravi Kadam, Senior Advocate with Mr. Hiren Kamod, Ms. V. Mohini, Ms. Aarti Aggarwal, Mr. Karan Khiani and Mr. Rohan Lopes, for Respondent No.1.

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Mrs. Neha S. Bhide, Government Pleader with Mr. O.A. Chandurkar, Additional Government Pleader and Mrs. G.R. Raghunwanshi, AGP for State, Respondent Nos.3 and 5.

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CORAM : ALOK ARADHE, CJ. &

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SANDEEP V. MARNE, J.

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DATED : 16 JULY 2025.

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P.C. (Per Sandeep V. Marne, J.) :

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1) The petition is shown to have been filed in public interest by six advocates seeking a restraint order against global fashion giant, PRADA from commercializing and using ‘toe ring sandals’ which is alleged to be deceptively similar to GI tagged product ‘Kolhapuri Chappal’ without securing authorisation from the registered proprietor or authorized users. Petition also seeks an public apology from

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Respondent Nos.1 and 2 acknowledging unauthorized use of Kolhapuri Chappal GI product with a further direction of wider circulation of such apology through appropriate media. Petition seeks permanent injunction against use by Respondent No.1 of the GI Tagged product ‘Kolhapuri Chappal’, as well as, compensation to the artisans community for reputational and economic damages. Petitioners have also prayed for investigations to be conducted by Respondent Nos.3 to 5 against Respondent No.1 for violating the rights of GI registered proprietors. Petition also seeks framing of transparent and appropriate guidelines for licensing and collaboration when registered GI products are used by international brands and for initiation of awareness and enforcement measures for protection of ‘Kolhapuri Chappals’ and other GI products from similar unauthorized use.

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2) Brief facts leading to filing of the PIL petition, as pleaded, are that, the GI product Kolhapuri Chappal has been registered under the provisions of Geographical Indications of Goods (Registration of Protection) Act, 1999 (the G.I. Act) vide Certificate dated 4 May 2009, which is renewed from time to time and is valid upto the year 2029. Respondent No.1-PRADA GROUP is a global fashion brand having its office at Milan, Italy. Respondent No.2 is an Indian subsidiary of Respondent No.1. Respondent Nos.1 and 2 are collectively referred to as PRADA. According to the Petitioners, PRADA held the event of Spring Summer Men’s Collection at Milan, Italy on 22 June 2025 and introduced ‘Toe Ring Sandals’. During the course of the event, the designers did not acknowledge that the product was inspired from Kolhapuri Chappals. According to the Petitioners, the product showcased by PRADA in the said event, bears a striking resemblance to the traditional Kolhapuri Chappals and the product is reportedly priced at over Rs.1,00,000/-. Petitioners have highlighted the specialized human skills and time intensive process required for completion of each

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pair of Kolhapuri Chappal and the art form developed over 800 years in India by the artisans. That PRADA is seeking to introduce deceptively similar product with ulterior objective of earning unauthorized profits through unauthorized use of the geographical indication of the registered proprietors. According to the Petitioners, the acts of PRADA violate provisions of Section 22 of the G.I. Act.

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3) We have heard Mr. Hingmire, the learned counsel who is also Petitioner No.1 in the petition. He would submit that GI registration in respect of Kolhapuri Chappals has been secured after struggle for 23 long years with which Petitioner No.1 was closely associated. He would demonstrate the deceptive similarity between PRADA products and Kolhapuri Chappals. That if PRADA is permitted to copy the Kolhapuri Chappal for introduction of its own products in the market, the same would result in heavy losses to the persons engaged in the industry of manufacture and sale of Kolhapuri Chappals. That introduction of PRADA’s products would destroy the geographical importance of Kolhapuri Chappal. That since the GI has been registered in the name of Respondent No.4, unauthorized use thereof violates statutory rights not just of Respondent No. 4 but of Petitioners as well. That the impugned action of PRADA violates fundamental right under Articles 21, 29, 51A(f), as well as right under Article 46 of the Constitution of India. That introduction of PRADA products would adversely affect livelihood of lakhs of artisans and next generation of artisans would be dissuaded from the art of manufacturing Kolhapuri Chappals. That the issue involved in the petition is not restricted only to violation of statutory right but seeks to highlight the effect of action of PRADA on livelihood of lakhs of persons whose lives will be affected on account of introduction of such products. That therefore PRADA must be made to publicly apologise for seeking to introduce products similar to Kolhapuri Chappals

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without securing authorization from the registered proprietors. He would submit that PIL is required to be filed with a view to protect larger interest of the community. That the registered proprietors of GI are government agencies/departments who may not be interested in initiating remedy of filing suit for protection of the G.I. rights and that therefore Petitioners, who are public spirited individuals, have taken up cause on behalf of lakhs of persons whose livelihood would be affected on account of the impugned act of PRADA.

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4) The petition is opposed by Mr. Kadam, the learned Senior Advocate appearing for Respondent Nos.1 and 2. Inviting our attention to pleadings in para-9 of the petition, he would submit that the PIL is shown to have been filed to demonstrate breach of statutory right of the Petitioners and therefore no element of public interest is involved in the petition. That under Section 11 of the G.I. Act, any association of persons or producers or organization or authority established by or under any law can apply for registration and accordingly Sant. Rohidas Leather Industries and Charmakar Development Corporation Ltd. (LIDCOM) and Dr. Babu Jagjivan Ram Leather Industries Development Corporation Ltd. (LIDKAR) have been granted registration in respect of the GI of Kolhapuri Chappals . That if PRADA’s act violates any of the statutory right of the said proprietors, they need to adopt appropriate remedy by filing Civil Suit and violation of their statutory right cannot be agitated by Petitioners in a PIL. That Sections 21 and 22 of the G.I. Act provide for adequate mechanism for infringement of registered GI. He would also question maintainability of the PIL against Respondent Nos.1 and 2 who are private entities and not Instrumentalities of State. He would accordingly pray for dismissal of the petition.

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5) We have also heard Ms. Bhide, the learned Government Pleader appearing for Respondent-State.

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6) After having considered the submissions canvassed by the learned counsel appearing for parties, it is seen that the GI in respect of Kolhapuri Chappals falling in Class-25-Footwear has been registered by the Geographical Indication Registry in the names of LIDCOM and LIDKAR vide registration certificate dated 4 May 2009 under number 169. Petitioners have impleaded LIDCOM as Respondent No.4. However, LIDKAR has not been implemented as a party to the present petition. The petition is filed by six Advocates seeking following reliefs :-

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12) RELIEFS PRAYED FOR:

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The Petitioners most humbly prays before this Hon'ble Court that -

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a) Issue a writ, order or direction restraining Respondent No. 1 PRADA from commercializing and using the so called "Toe ring sandals" which is originally a GI Tagged product "Kolhapuri Chappal" by any means in the designations or presentation of goods in any form without any authorization taken from the registered proprietor or authorized users;

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b) Direct Respondent No. 1 and 2 to issue a public apology, in the manner and form approved by this Hon'ble Court, acknowledging the unauthorized use of "Kolhapuri Chappal" GI product, no unauthorized use of GI's will occur in future and expressly recognize the rights of the Indian artisan's community;

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c) Direct Respondent No. 1 and 2 to record public apology on affidavit before this Hon'ble Court, affirming its genuineness and ensuring that the apology is widely circulated through appropriate media, including but not limited to newspapers, digital platforms and the brand's official communication channels, this undertaking shall set a precedent for all international brands operating in India;

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d) Direct permanent injunction against Respondent No. 1's unauthorized Gl use, compensation to the artisans community for reputational and economic damages;

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e) Direct Respondent No.3, 4 & 5 to investigate and take appropriate action under applicable law, against PRADA for violating the rights of the GI Registered Proprietors, Authorized User and the Artisan's community;

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f) Direct Respondent No. 3, 4 & 5 to frame transparent /appropriate guidelines for licensing and collaboration when Registered GI products are to be used by international brands, initiate awareness and enforcement measures to protect "Kolhapuri Chappal" and other GI products from similar unauthorized use;

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g) Constitute a committee for the protection of GI registered products in international markets including legal representation, trade negotiation and artisans' rights;

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h) Order as to costs;

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i) Pass any other order(s) as this Hon'ble Court may deem fit in the interest of justice and public welfare.

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7) Thus, the petition in public interest is filed seeking injunction against PRADA from manufacturing and/or selling toe ring sandals which are alleged to be deceptively similar to Kolhapur Chappals.

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8) Perusal of provisions of GI Act would indicate that application for registration of GI under Section 11 of the G.I. Act can be made by Association of persons or producers or any organization or authority established by or under any law, which represents the interests of producers of the concerned goods. Sub section (1) of Section 11 provides thus :-

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11. Application for registration.—

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(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.

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9) Section 21 of the GI Act deals with rights conferred by registration and provides thus :-

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21. Rights conferred by registration.—

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(1) Subject to the other provisions of this Act, the registration of a geographical indication shall, if valid, give,—

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(a) to the registered proprietor of the geographical indication and the authorised user or users thereof the right to obtain relief in respect of infringement of the geographical indication in the manner provided by this Act;

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(b) to the authorised user thereof the exclusive right to the use of the geographical indication in relation to the goods in respect of which the geographical indication is registered.

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(2) The exclusive right to the use of a geographical indication given under clause (b) of sub-section (1) shall be subject to any condition and limitation to which the registration is subject.

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(3) Where two or more persons are authorised users of geographical indications, which are identical with or nearly resemble each other, the exclusive right to the use of any of those geographical indications shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by anyone of those persons as against any other of those persons merely by registration of the geographical indications, but each of those persons has otherwise the same rights as against other persons as he would have if he were the sole authorised user.

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10) Section 22 of the GI Act deals with infringement of

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registered geographical indications and provides thus :-

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22. Infringement or registered geographical indications.—

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(1) A registered geographical indication is infringed by a person who, not being an authorised user thereof,—

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(a) uses such geographical indication by any means in the designations or presentation of goods that indicates or suggests that such goods originate in a geographical area other than the true place of origin of such goods in a manner which misleads the persons as to the geographical origin of such goods; or

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(b) uses any geographical indication in such manner which constitutes an act of unfair competition including passing off in respect of registered geographical indication. Explanation 1.—For the purposes of this clause, “act of unfair competition” means any act of competition contrary to honest practices in industrial or commercial matters. Explanation 2.—For the removal of doubts, it is hereby clarified that the following acts shall be deemed to be acts of unfair competition, namely:—

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(i) all acts of such a nature as to create confusion by any means whatsoever with the establishment, the goods or the industrial or commercial activities, of a competitor; (ii) false allegations in the course of trade of such a nature as to discredit the establishment, the goods or the industrial or commercial activities, of a competitor;

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(iii) geographical indications, the use of which in the course of trade is liable to mislead the persons as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods;

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(c) uses another geographical indication to the goods which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the persons that the goods originate in the territory, region or locality in respect of which such registered geographical indication relates.

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(2) The Central Government may, if it thinks necessary so to do for providing additional protection to certain goods or classes of goods under sub-section (3), by notification in the Official Gazette, specify such goods or class or classes of goods, for the purposes of such protection.

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(3) Any person who is not an authorised user of a geographical indication registered under this Act in respect of the goods or any class or classes of goods notified under sub-section (2), uses any other geographical indication to such goods or class or classes of goods not originating in the place indicated by such other geographical indication or uses such other geographical indication to such goods or class or classes of goods even indicating the true origin of such goods or uses such other geographical indication to such goods or class or classes of goods in translation of the true place of origin or accompanied by expression such as “kind”, “style”, “imitation” or the like expression, shall infringe such registered geographical indication.

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(4) Notwithstanding anything contained in this section, where the goods in respect of which a geographical indication has been registered are lawfully acquired by a person other than the authorised user of such geographical indication, further dealings in those goods by such person including processing or packaging, shall not constitute an infringement of such geographical indication, except where the condition of goods is impaired after they have been put in the market.

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11) As observed above, LIDCOM and LIDKAR are the registered proprietors of GI in Kolhapuri Chappals. Section 21 of the GI Act confers on LIDCOM and LIDKAR to obtain relief in respect of infringement of GI in the manner provided by the Act. They can bring an action against unauthorized user for infringement of GI by filing a suit under the provisions of Section 22 of the GI Act.

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12) LIDCOM is a Corporation under the administrative control of the Government of Maharashtra. Similarly, LIDKAR who is not impleaded to the petition, appears to be a Corporation of the Government of Karnataka. Both the registered proprietors are well equipped to protect their rights flowing from registered GI in Kolhapuri Chappals by bringing action against PRADA, if they believe that PRADA is unauthorisedly using the registered GI. An action which can be brought by way of a suit by registered proprietor of GI cannot be permitted to be agitated through a PIL. It is not the case of the Petitioners that on account of social or economic background, the registered proprietors are incapable of agitating their own rights by exercising statutory remedies. Both the registered proprietors are government organisations and are apparently established to look after the welfare of artisans involved in leather footwear industry. Both the registered proprietors thus possess the necessary wherewithal for bringing action against PRADA if they believe that PRADA has committed infringement of their proprietary right in Kolhapur Chappal GI.

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13) In BALCO Employees’ Union (Regd.) Versus. Union of India1 , the Apex Court has held that a PIL must satisfy the following parameters :-

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1 (2002) 2 SCC 333

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While PIL initially was invoked mostly in cases connected with the relief to the people and the weaker Sections of the society in and in areas where there was violation of human rights under Article 21, but with the passage of time, petitions have been entertained in other spheres. Prof. S.B. Sathe has summarised the extent of the jurisdiction which has now been exercised in following words:-

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PIL may, therefore, be described as satisfying one or more of the following parameters. These are not exclusive but merely descriptive:

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Where the concerns underlying a petition are not individualist but are shared widely by a large number of people (bonded labour, undertrial prisoners, prison inmates).

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Where the affected persons belong to the disadvantaged Sections of society (women, children, bonded labour, unorganised labour etc.)

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Where judicial law making is necessary to avoid exploitation (inter-country adoption, the education of the Children of the prostitutes).

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Where judicial intervention is necessary for the protection of the sanctity of democratic institutions (independence of the judiciary, existence of grievances redressal forums).

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Where administrative decisions related to development are harmful to the environment and jeopardize people's to natural resources such as air or water".

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(emphasis added)

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14) The Apex Court in Environment and Consumer Protection Foundation Versus. Union of India2 has held in paras-29 and 30 as

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under :-

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… Public interest litigation is brought before the court not for the purpose of enforcing the right of one individual against another as happens in the case of ordinary litigation, but it is intended to promote and vindicate public interest which demands that violations of constitutional or legal rights of large numbers of people who are poor, ignorant or in a socially or economically disadvantaged position should not go unnoticed and unredressed. That would be destructive of the Rule of law which forms one of the essential elements of public interest in any democratic form of Government.

2 (2017) 16 SCC 780

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A little later in the judgment, it was said:

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Millions of persons belonging to the deprived and vulnerable Sections of humanity are looking to the courts for improving their life conditions and making basic human rights meaningful for them. They have been crying for justice but their cries have so far been in the wilderness. They have been suffering injustice silently with the patience of a rock, without the strength even to shed any tears.

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The advantage of public interest litigation is not only to empower the economically weaker Sections of society but also to empower those suffering from social disabilities that may not necessarily of their making. The widows of Vrindavan (and indeed in other ashrams) quite clearly fall in this category of a socially disadvantaged class of our society.

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(emphasis added)

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15) In Jaipur Shahar Hindu Vikas Samiti Versus. State of Rajasthan and others3 , the Apex Court has held in para-49 as under :-

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The concept of Public Interest Litigation is a phenomenon which is evolved to bring justice to the reach of people who are handicapped by ignorance, indigence, illiteracy and other down trodden people. Through the Public Interest Litigation, the cause of several people who are not able to approach the Court is espoused. In the guise of Public Interest Litigation, we are coming across several cases where it is exploited for the benefit of certain individuals. The Courts have to be very cautious and careful while entertaining Public Interest Litigation. The Judiciary should deal with the misuse of Public Interest Litigation with iron hand. If the Public Interest Litigation is permitted to be misused the very purpose for which it is conceived, namely to come to the rescue of the poor and down trodden will be defeated. The Courts should discourage the unjustified litigants at the initial stage itself and the person who misuses the forum should be made accountable for it. In the realm of Public Interest Litigation, the Courts while protecting the larger public interest involved, should at the same time have to look at the effective way in which the relief can be granted to the people, whose rights are adversely affected or at stake. When their interest can be protected and the controversy or the dispute can be adjudicated by a mechanism created under a particular statute, the parties should be relegated to the

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3 (2014) 5 SCC 530

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appropriate forum, instead of entertaining the writ petition fledi as Public Interest Litigation.

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(emphasis & underlining added)

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16) We are therefore not inclined to entertain the instant PIL the present PIL at the instance of the Petitioners. Also of relevance is the fact that similarity between two products and infringement action involves disputed questions of facts which needs leading of evidence. On this count as well, an infringement action in registered GI cannot be brought by way of a petition filed under Article 226 of the Constitution of India. This is yet another reason why we are not inclined to entertain the present petition.

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17) The PIL petition is accordingly dismissed. However dismissal of the petition shall not come in the way of registered proprietors of GI in Kolhapuri Chappal to initiate action against PRADA in accordance with law, if they so desire.

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[SANDEEP V. MARNE, J.]

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[CHIEF JUSTICE]

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Digitally signed by NEETA NEETA SHAILESH SHAILESH SAWANT SAWANT Date: 2025.07.16 20:54:53 +0530

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Page No.12 of 12 16 July 2025

Prof Adv Ganesh S Hingmire and Ors. v. Prada Group and Ors.

Case brief

What is this about?

What did the court decide?

Prof Adv Ganesh S Hingmire and Ors. v. Prada Group and Ors.

Case brief

What is this about?

What did the court decide?

What the court decided

Issues for consideration

Cases cited

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Procedural history

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