Decoding Infringement of Geographical Indications: Legal Implications and Remedies

When a producer in another state labels their rice “Basmati” or passes off ordinary whisky as “Scotch,” they are not just misleading buyers – they are committing a legal wrong with serious consequences under Indian law. The Geographical Indications of Goods (Registration and Protection) Act, 1999 (GI Act) provides a dedicated statutory framework to prevent exactly this kind of misuse. But what exactly constitutes infringement of a Geographical Indication? How is it different from passing off? And what legal remedies does the law offer? This post breaks it all down.

What is a geographical indication, and why does infringement matter? 🔗

A Geographical Indication (GI) is a sign or name used on products that have a specific geographical origin and whose qualities, reputation, or characteristics are essentially attributable to that origin. Under Section 2(1)(e) of the GI Act, a GI identifies goods – agricultural, natural, or manufactured – as originating from a specific territory, region, or locality. Darjeeling Tea, Kanchipuram Silk, Kashmir Pashmina, and Banarasi Sarees are among India’s most well-known GI-tagged products.

GI infringement is not just a legal issue. It causes real economic harm to producers who have built their reputation over generations, erodes cultural heritage, and deceives consumers who pay a premium expecting authentic goods. As India’s GI registry grows – with over 370 registered GIs as of 2020 – the question of enforcement and infringement becomes increasingly critical.

The statutory framework: what the GI Act says 🔗

Section 20: only registered GIs can sue for infringement 🔗

The GI Act draws a sharp line at registration. Section 20(1) states clearly that no person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered geographical indication. This is a foundational rule: if your GI is not on the register maintained at the Geographical Indications Registry in Chennai, you cannot bring an infringement action under the Act.

However, Section 20(2) preserves the common law right of passing off. Even without registration, a person whose GI is being misused may still bring an action for passing off – a separate and distinct remedy rooted in tort law. This distinction is central to understanding the full scope of GI protection in India.

Section 21: rights conferred by registration 🔗

Once a GI is validly registered, Section 21 kicks in. It grants the registered proprietor and the authorised user(s) the right to obtain relief in respect of infringement. Specifically, only authorised users – that is, producers from within the designated geographical area who are registered under Part B of the GI Register – hold the exclusive right to use the GI for the goods in question. This makes GI rights inherently communal, not individual: they cannot be assigned, transferred, or licensed the way a trademark can.

Section 22: what constitutes infringement 🔗

The heart of the infringement regime lies in Section 22 of the GI Act. A person infringes a registered GI if they use the indication in relation to goods that do not originate from the registered geographical area, in a manner that misleads consumers as to the true origin of the goods. Infringement also occurs when the GI is used in a way that amounts to unfair competition, including use that is false, misleading, or constitutes a deceptive imitation even in translation.

Section 22 identifies the following as acts of infringement: using the GI on goods not from the registered area; using any expression, sign, or imitation of the GI likely to deceive; and use that constitutes unfair competition contrary to honest commercial practice. Critically, the Calcutta High Court in Tea Board, India v. ITC Limited clarified that Section 22 confines GI protection to “goods” – meaning that using the name “Darjeeling” for a hotel lounge offering hospitality services did not amount to infringement of the Darjeeling tea GI, since the GI Act does not extend to services.

Infringement vs. passing off: a critical distinction 🔗

This is one of the most important conceptual distinctions in GI law. Infringement is a statutory cause of action available only to the registered proprietor or authorised user of a registered GI. Passing off, on the other hand, is a common law action available even for unregistered GIs, where the plaintiff must establish three elements: (a) reputation or goodwill in the GI, (b) a misrepresentation by the defendant that is likely to deceive consumers, and (c) actual or likely damage as a result.

The GI Act itself preserves the passing off remedy through Section 20(2). Importantly, Section 22(1)(b) and its Explanations identify passing off as a species of unfair competition under the Act – meaning that in some circumstances, passing off can be argued alongside a statutory infringement claim, provided the elements are made out. However, courts have been clear that the two remedies have distinct evidentiary requirements and do not automatically follow from each other.

In Tea Board v. ITC Limited, the court found that even the passing off claim failed because the businesses of the Tea Board (which certified tea) and ITC (which operated a hotel lounge) were too far removed from each other to create any real risk of consumer confusion. There was no competition between the parties, and high-end hotel guests were unlikely to be misled into thinking the lounge’s services were connected to Darjeeling tea production.

Common forms of GI infringement 🔗

In practice, GI infringement takes several forms. Misrepresentation of origin is the most direct – for example, selling tea grown outside Darjeeling’s 87 tea gardens as “Darjeeling Tea.” Unauthorised use of GI tags involves using a registered GI logo or certification mark without authorisation from the registered proprietor. Generic misuse occurs when a GI name is used as a generic descriptor – calling any long-grain aromatic rice “Basmati,” for instance. Trademark conflict arises when a trade mark is registered that is deceptively similar to a registered GI; the Act provides that no action on such a trademark can be taken after five years from the date the infringement became known, provided the trademark was not applied for in bad faith. Finally, imitation – using a name in translation or phonetic equivalent that still evokes the protected GI – is also covered under Section 22.

Evidentiary requirements for proving infringement 🔗

To succeed in an infringement action, the plaintiff must establish several things. First, they must show that the GI is validly registered – Section 23 of the GI Act provides that registration is prima facie evidence of validity, which gives the registered proprietor a significant evidentiary advantage. Second, the plaintiff must demonstrate that the defendant has used the GI – or a deceptively similar indication – in relation to goods that do not originate from the designated geographical area. Third, where the claim involves unfair competition or passing off, the plaintiff must also establish misrepresentation and likely harm.

Courts have held that consumer deception is central to the infringement inquiry. If an ordinary consumer in the relevant market would not be misled about the origin of the goods, the infringement claim is unlikely to succeed – as seen in the ITC Darjeeling Lounge case. The standard of the average, reasonably attentive consumer is applied, and in cases involving premium or niche products, courts have noted that such consumers tend to be more discerning.

One critical procedural point: under Section 68 of the GI Act, authorised users are generally required to be impleaded alongside the registered proprietor in infringement suits. However, the Madhya Pradesh High Court, in the Scotch Whisky Association case, held that the word “and” in Section 21(1)(a) must be read as “or,” meaning the registered proprietor can independently file a suit even without joining the authorised user as a party.

Judicial avenues: where to file and who can sue 🔗

Under Section 66(1)(c) of the GI Act, infringement suits must be filed before a court not below the level of a District Court. Only the registered proprietor and the authorised user have locus standi to bring an infringement action. This was affirmed by the Bombay High Court in the Hingmire v. PRADA matter, where it was clarified that questions of GI infringement cannot be adjudicated through a Public Interest Litigation (PIL) under Article 226 of the Constitution.

Appeals from orders of the Registrar of Geographical Indications go to the Intellectual Property Appellate Board (IPAB), which is based in Chennai and is the apex appellate authority for GI matters in India. Appeals must normally be filed within three months of the order or decision being communicated. The Appellate Board can also grant a certificate of validity of a registered GI; once such a certificate is issued, the registered proprietor or authorised user can recover full costs and expenses in any subsequent legal proceedings where validity is challenged.

Remedies available for GI infringement 🔗

Civil remedies 🔗

Section 67 of the GI Act sets out the civil relief available in infringement suits. The court may grant an injunction – restraining the defendant from continuing the infringing use – subject to such terms as it deems fit. At the option of the plaintiff, the court may also award either damages or an account of profits, along with an order for the destruction or erasure of infringing labels, marks, and indications.

There is, however, an important limitation on monetary relief. The court will not award damages or account of profits if the defendant satisfies the court that, at the time of infringement, they were unaware and had no reasonable grounds to believe that the GI was registered, and that upon becoming aware, they immediately ceased use. This is an innocent infringement defence that protects bona fide commercial actors who had no knowledge of the registered GI. This mirrors the approach in trademark law and reflects a broader principle of not penalising those who acted without fault.

Criminal remedies 🔗

The GI Act also provides criminal sanctions for more serious violations. Falsely applying a GI, falsifying a GI, or tampering with the origin of goods is punishable with imprisonment of not less than six months, extendable to three years, and a fine ranging from ₹50,000 to ₹2,00,000. For repeat offenders, the minimum imprisonment increases to one year and the minimum fine to ₹1,00,000. The court may, under certain conditions, reduce the sentence, but must record reasons for doing so in the judgment.

Other criminal offences under the Act include falsely representing a GI as registered, falsifying entries in the GI Register, and falsely representing a place as connected with the GI Registry. Additionally, anyone who abets, from within India, an act committed abroad that would be an offence under the Act if committed in India can also be prosecuted – a provision with significant relevance for online and cross-border infringement.

Protection against groundless threats 🔗

The GI Act also contains provisions against groundless threats of legal proceedings. If a person receives unjustified threats of infringement action, they may seek a declaration that such threats are unjustifiable and an injunction against continuation of the threats, along with damages for any loss suffered. This provision serves as a check against bad faith litigation and harassment by GI holders.

Key judicial precedents that shaped GI infringement law 🔗

Three cases stand out as defining the contours of GI infringement jurisprudence in India.

In Scotch Whisky Association v. Golden Bottling Limited (2006), the Delhi High Court restrained an Indian distiller from using “Red Scot” for whisky. The court applied Section 22(1)(a) to prohibit use that could mislead consumers about the geographic origin of the product, and held that the registered proprietor of a foreign GI could independently enforce its rights before Indian courts. This case significantly raised the bar for GI enforcement and affirmed India’s commitment to international GI obligations under the TRIPS Agreement.

In Tea Board, India v. ITC Limited (2011 and 2019), the Calcutta High Court delivered what has become the first and most extensively analysed GI judgment in India. The court ruled that ITC’s “Darjeeling Lounge” in a five-star hotel did not infringe the Darjeeling GI because Section 22 limits GI protection to goods, not services, and there was no consumer confusion between a hotel lounge and certified Darjeeling tea. The passing off claim also failed for want of misrepresentation and competitive overlap. The case remains a landmark for understanding both the scope and the limits of GI protection.

Most recently, in Hingmire v. PRADA, the Bombay High Court clarified that design imitation or cultural inspiration alone does not constitute infringement under Section 22 if the GI name itself is not used. Only the registered proprietors (LIDCOM and LIDKAR in the case of Kolhapuri chappals) had the standing to bring an infringement action – not individual artisans or third parties filing PILs. This ruling exposed a significant gap in the GI Act: it protects the GI name but not the underlying design or cultural aesthetic.

The limits of the current legal framework 🔗

While the GI Act provides a reasonably robust framework for infringement and remedies, significant gaps remain. The Act’s protection is strictly tied to the use of the GI name or a deceptively similar indication – it does not cover stylistic imitation, design appropriation, or digital misuse where the GI name may not be explicitly invoked. As commentators have noted, strengthening enforcement under Section 25 – particularly at international borders and in digital marketplaces – is essential as e-commerce continues to grow. The contrast with Article 23 of TRIPS, which provides additional protection for wines and spirits (extending even to use of expressions like “kind,” “type,” or “style”), illustrates how India’s GI protection for other product categories could be further strengthened through legislative reform.

What do you think? With design imitation and online misuse increasingly circumventing the GI Act’s name-based protection, should India expand the scope of infringement beyond the use of the GI name itself? And in a country where thousands of artisan communities depend on GI-tagged products for their livelihoods, is the current requirement of registration as a precondition for infringement proceedings the right balance between legal certainty and practical protection?

References

1. https://ipindia.gov.in/act-1999.htm
2. https://indiankanoon.org/doc/1463915/
3. https://ipindia.gov.in/GI/act_1999
4. https://finlawassociates.com/blog/understanding-geographical-indication-gi-infringement-in-india
5. https://trademarkblog.kluweriplaw.com/2019/05/08/india-limitations-of-geographical-indication-and-certification-trademarks-tea-board-v-itc-limited-2019/
6. https://spicyip.com/2019/02/certification-trade-marks-and-gi-versus-regular-trade-marks-the-calcutta-high-court-ruling-in-tea-board-v-itc.html
7. https://kanalysis.com/the-protection-of-geographical-indications-in-india/
8. https://www.worldtrademarkreview.com/article/scotch-whisky-gi-infringement-case-clarifies-independent-rights-of-registered-owners-following-madhya-pradesh-high-court-ruling
9. https://www.lawyersclubindia.com/articles/the-geographical-indications-of-goods-registration-and-protection-act-1999-gi-act–14372.asp
10. https://egyankosh.ac.in/bitstream/123456789/51624/1/Unit-7.pdf
11. https://en.wikipedia.org/wiki/Geographical_Indications_of_Goods_(Registration_and_Protection)_Act,_1999
12. https://www.mondaq.com/india/trademark/1659632/the-gi-act-and-pradas-wake-up-call
13. https://www.wto.org/english/tratop_e/trips_e/trips_e.htm
14. https://www.ipandlegalfilings.com/geographical-indications-in-india-statutory-framework-judicial-interpretation-and-evolving-legal-developments