Understanding the Concept of Passing Off in Geographical Indications Protection

When a trader labels their product with a name that evokes a famous region – without any genuine connection to it – they are not just being misleading; they may be committing a legal wrong that has been recognized for over two centuries. This wrong is called passing off, and in the context of geographical indications (GIs), it serves as one of the most critical shields against the misappropriation of a region’s hard-earned reputation. Long before India enacted the Geographical Indications of Goods (Registration and Protection) Act, 1999, passing off was the primary tool used by courts to protect indicators of geographic origin. Understanding how this tort works – and how it has evolved – is essential for anyone studying GI protection law in India.

What is passing off? 🔗

Passing off is a common law tort that prevents one trader from misrepresenting their goods or services as being those of another, or as possessing qualities they do not actually have. In its simplest framing, as articulated in the foundational English case of Perry v. Truefitt (1842), the principle is straightforward: a person may not sell their own goods under the pretense that they are the goods of someone else. The tort does not require registration of any mark or indication. Instead, it protects the goodwill that a trader or producer has built in the marketplace through actual use and reputation.

In the GI context, passing off becomes particularly important because it extends protection even to unregistered geographical indications – that is, regional names or designations that have acquired a strong reputation in trade but have not (yet) been formally registered under the GI Act. Before the GI Act came into force in September 2003, passing off was one of only a few legal avenues available to producers seeking to protect their geographic identifiers from misuse.

The classic trinity: the three elements of passing off 🔗

The modern framework for establishing a passing off action was laid down by the UK House of Lords in Reckitt & Colman Products Ltd. v. Borden Inc. (1990) – commonly known as the Jif Lemon case. Lord Oliver articulated what is now called the “classic trinity”: three essential elements that a claimant must prove to succeed in a passing off action. These three elements – goodwill, misrepresentation, and damage – have become the cornerstone of passing off law in India as well, since Indian courts have consistently adopted common law principles inherited from the British legal system.

Goodwill 🔗

Goodwill refers to the reputation or brand value that has attached to a product’s name or get-up in the minds of the purchasing public. The claimant must show that consumers associate the name, mark, or indication with their goods specifically. In the GI setting, goodwill is typically collective – it belongs not to a single producer but to an entire community of producers in a region. For example, Darjeeling tea growers collectively hold the goodwill associated with the “Darjeeling” name; it signals a specific quality, aroma, and geographic origin to consumers worldwide. As established in the Jif Lemon case, proving goodwill often requires market survey evidence or long-established commercial use, making it one of the more evidentiary-intensive aspects of the claim.

Misrepresentation 🔗

Misrepresentation is the active element of the tort. The defendant must have made a false representation – whether intentional or not – that is likely to cause the public to believe that the defendant’s goods are those of, or are associated with, the claimant. In the GI context, misrepresentation typically occurs when a producer from outside a specific geographic region uses that region’s name or a confusingly similar designation on their product. Crucially, there is no requirement to prove that deception has actually occurred; a real likelihood of confusion is sufficient. This makes passing off a proactive rather than purely reactive remedy.

Damage 🔗

The third element is damage – the claimant must show that they suffer, or are likely to suffer, harm to their goodwill as a result of the misrepresentation. This could take the form of lost sales, dilution of the reputation of the genuine product, or erosion of consumer trust. Importantly, courts do not require proof of actual damage already suffered; a real and tangible probability of future damage is enough. This is particularly relevant in GI cases, where the harm is often systemic – a flood of inferior products carrying a famous regional name can gradually destroy the premium value that authentic producers have built over generations.

Extended passing off and geographical indications 🔗

A pivotal development in the application of passing off to GIs is the concept of extended passing off, which emerged from the English case of Erven Warnink BV v. J. Townend & Sons (Hull) Ltd. (1979), also known as the Advocaat case. Unlike classical passing off – which typically involves one trader misrepresenting their goods as those of a specific rival – extended passing off applies where a whole class of producers shares a collective goodwill in a distinctive product name, and a defendant misrepresents their goods as belonging to that class.

This doctrine is directly applicable to GIs because multiple legitimate producers from the same region often share a collective reputation in a product name. The tort of passing off, having its origin in common law, is flexible enough to recognize that descriptive terms – including geographical names – can acquire a distinctive reputation that deserves legal protection even when used legitimately by multiple producers. For instance, the protection of “Basmati” as a geographical indication has relied partly on passing off principles to prevent rice from outside the traditional Basmati-growing regions from being marketed as authentic Basmati rice.

Passing off and the GI Act, 1999 🔗

When India enacted the GI Act, 1999, it did not abolish the common law remedy of passing off. Instead, it preserved it. Section 20(2) of the GI Act explicitly preserves the right to bring a passing off action, independent of the statutory remedies available for infringement. This means that passing off can be invoked even for unregistered GIs, or in situations where the statutory infringement action under Section 22 may not be available – such as when the defendant’s use does not squarely fall within the scope of a registered GI but still misappropriates its goodwill.

The key structural difference is this: infringement under the GI Act is a statutory tort – it applies only to registered GIs and is proved by showing unauthorized use. Passing off, by contrast, is a common law tort that relies on demonstrating goodwill, misrepresentation, and damage. The burden of proof in passing off is generally higher, but it provides a broader safety net for producers whose GIs may not yet be registered or whose situations fall outside the strict statutory framework.

Key judicial decisions shaping passing off in the GI context 🔗

Scotch Whisky Association v. Pravara Sahakar Shakar Karkhana Ltd. (AIR 1992 Bom 294) 🔗

This is one of the earliest and most frequently cited Indian cases on passing off in the GI context. The Scotch Whisky Association, a UK-based body protecting the interests of Scottish whisky producers, sued an Indian manufacturer who was selling whisky under labels such as “Blended Scotch Whisky” and “Blended with Scotch” for products that were not, in fact, Scotch whisky. The Bombay High Court held that the plaintiff had sufficient interest to restrain the defendant’s passing off, finding that the defendant had colourably imitated the goodwill of Scotch whisky to gain unequal commercial benefits. The court granted a temporary injunction, establishing that Indian courts would uphold passing off claims to protect geographical indications even in the absence of a specific GI statute.

Scotch Whisky Association v. Golden Bottling Ltd. (Delhi High Court) 🔗

In a later proceeding before the Delhi High Court involving the Scotch Whisky Association and Golden Bottling Limited – a Jaipur-based company – the court applied GI protection principles to restrain Indian distillers from using “Red Scot” for whisky, as the mark evoked the registered GI “Scotch Whisky” and could mislead consumers about the product’s geographic origin. This case reinforced that both the statutory framework and the passing off doctrine work in tandem to protect GI-linked goodwill.

Tea Board, India v. ITC Limited (2011 & 2019, Calcutta High Court) 🔗

This case is among the most instructive in defining the limits of passing off in the GI context. The Tea Board – which holds the GI and certification trademark for “Darjeeling Tea” – sued ITC Limited after the hotel chain named a lounge in its luxury Kolkata hotel the “Darjeeling Lounge.” The Tea Board argued that this amounted to passing off ITC’s services as being linked to the Darjeeling GI, causing consumer confusion.

The Calcutta High Court, in applying passing off principles, held that the plaintiff must establish reputation of the goods, possibility of consumer deception, and likelihood of loss. The court found that the “Darjeeling Lounge” was accessible only to high-end hotel guests who would not be misled into believing that the food and beverages served there originated from the Darjeeling district. Crucially, the court held that “Darjeeling,” being the name of a place, cannot be exclusively claimed by the Tea Board for all commercial uses – the GI registration protects tea, not every invocation of the word. The suit was ultimately dismissed, demonstrating that passing off in the GI context requires clear evidence of consumer confusion and actual or probable damage to the genuine producers’ goodwill – loose assertions are not enough.

Why passing off matters: protection beyond registration 🔗

One of the most significant practical roles of passing off in GI law is that it provides a legal remedy before and beyond registration. Registration under the GI Act offers cleaner and more straightforward protection, but the registration process takes time and may not cover every aspect of a GI’s commercial use. Passing off fills this gap. Actions for passing off are specifically initiated against the infringement of unregistered geographical indications, giving producers a viable remedy even when formal registration is absent or pending.

Moreover, passing off protects the collective goodwill of an entire community – a feature that aligns naturally with the nature of GIs. When a producer from outside Darjeeling falsely labels their tea as “Darjeeling Tea,” they harm not just one business but hundreds of tea estates, thousands of workers, and a century-old reputation. Passing off law, through its focus on goodwill and misrepresentation, is structurally equipped to address this kind of collective harm – even when the legal identity of the plaintiff may be a producer association rather than an individual firm.

The interplay between passing off and GI infringement 🔗

It is important not to conflate passing off with statutory GI infringement, even though both address misuse of geographic identifiers. Infringement under the GI Act applies only to registered GIs and requires proving unauthorized use in a commercial context. Passing off, by contrast, applies to both registered and unregistered GIs, but demands the additional burden of proving goodwill, misrepresentation, and damage. In practice, plaintiffs often plead both simultaneously to maximize their legal protection. GI infringement suits and passing off actions often proceed together in the same suit, giving courts the flexibility to grant relief on either or both grounds.

The two remedies also differ in their focus: infringement is more mechanical – did the defendant use the registered GI without authorization? – while passing off demands a more contextual inquiry into market reputation, consumer behavior, and actual or probable confusion. Both have their strengths, and the choice between them – or the decision to pursue both – is a key strategic consideration for GI holders and their legal counsel.

What do you think? Given that passing off requires a higher burden of proof than statutory GI infringement, should India consider expanding the GI Act to provide stronger automatic protection for unregistered GIs – or does the flexibility of the common law tort serve producers better in practice? And with cases like Tea Board v. ITC showing the limits of GI-based passing off claims, how should the law balance the exclusive rights of GI holders against the legitimate use of geographic names in commerce?

References

1. https://ipindia.gov.in/gi.htm
2. https://www.schooloflegaleducation.com/wp-content/uploads/2019/08/Geographical-Indications.pdf
3. https://en.wikipedia.org/wiki/Reckitt_%26_Colman_Products_Ltd_v_Borden_Inc
4. https://www.tannerdewitt.com/passing-off-the-jif-lemon-case-reckitt-colman-ltd-v-borden-inc/
5. https://www.ipandlegalfilings.com/geographical-indications-and-passing-off-in-india-safeguarding-traditional-crafts-in-the-global-marketplace/
6. https://blog.ipleaders.in/reliefs-provided-for-violation-of-geographical-indication-in-india/
7. https://www.mondaq.com/india/trademark/1659632/the-gi-act-and-pradas-wake-up-call
8. https://legalblogs.wolterskluwer.com/trademark-blog/india-limitations-of-geographical-indication-and-certification-trademarks-tea-board-v-itc-limited-2019/
9. https://www.majumdarip.com/blog_post/darjeeling-is-not-all-about-tea/
10. https://www.ourlegalworld.com/the-protection-of-geographical-indications-in-india-ipr-club/
11. https://thelegalschool.in/blog/geographical-indication-infringement-cases