Passing Off vs. Infringement: Navigating the Legal Nuances of Geographical Indications

When someone sells rice grown in Punjab and labels it “Basmati” – or markets tea from Nepal as “Darjeeling” – something more than just a brand is being misused. An entire region’s heritage, the livelihoods of thousands of producers, and the trust of consumers are all at stake. Indian law provides two distinct legal routes to tackle such misuse of geographical indications (GIs): an action for infringement and an action for passing off. While both aim to prevent unfair exploitation of a GI, they are fundamentally different in their basis, requirements, and strategic application. Understanding this distinction is essential – both for legal practice and for producers seeking to protect what belongs to their region.

The legal foundation: two different paths to protection 🔗

The Geographical Indications of Goods (Registration and Protection) Act, 1999 (GI Act) is the cornerstone of GI protection in India. It came into force on 15 September 2003 and created a dedicated statutory system for registering and protecting geographical indications. Before this legislation existed, Indian courts had no specific statute to rely on – and so they applied the common law principle of passing off to protect GIs. That historical reality shapes how the two remedies work even today: infringement is a creature of statute, while passing off is a creature of common law.

Section 20(2) of the GI Act explicitly preserves the right to bring a passing off action, ensuring that the enactment of the statute did not eliminate this older remedy. So the two actions coexist, each serving a different purpose and addressing different situations.

Infringement: a statutory remedy tied to registration 🔗

An infringement action under the GI Act is only available when the GI in question has been formally registered with the Geographical Indications Registry in Chennai. This is the most critical threshold. Section 20(1) makes it clear that no person can institute proceedings to prevent infringement or recover damages for an unregistered geographical indication. Registration is not just a procedural formality – it is a legal prerequisite for accessing the statutory remedy.

What constitutes infringement 🔗

Section 22 of the GI Act defines infringement as unauthorized use of a registered GI in a way that suggests goods originate from a geographical area other than their true place of origin, in a manner that misleads the public. This covers several scenarios: using a GI without authorization from the registered proprietor or authorized users; using a GI in a way that, even if literally true, falsely represents the origin of goods; and even using the GI in translation or with qualifiers like “kind,” “style,” or “imitation.” So if someone sells a saree woven in Andhra Pradesh as a “Banarasi Saree,” that is straightforward infringement – the goodwill and craftsmanship of Varanasi’s weavers is being appropriated without entitlement.

Proof requirements in infringement 🔗

Because infringement is a statutory tort, the plaintiff’s task is more structured. The key elements to be proven are: that there is a valid registration of the GI; that the defendant is not an authorized user; that the defendant used the GI commercially; and that such use is likely to mislead consumers about the geographic origin of the goods. Crucially, Section 23 of the GI Act provides that the certificate of registration is prima facie evidence of the GI’s validity – a significant evidentiary advantage for the plaintiff. The registered proprietor does not need to re-establish the distinctiveness or reputation of the GI from scratch each time they go to court.

Passing off: a common law remedy built on goodwill 🔗

Passing off operates on an entirely different legal basis. It is not tied to registration – instead, it protects the goodwill that a GI has acquired through actual use and market reputation. As the Altacit Global resource on GI protection explains, the principal purpose of a passing off action is to protect the name, reputation, and goodwill of producers against any unfair attempt to free-ride on them. This makes it a vital safety net for GIs that have genuine market significance but have not yet been formally registered.

The classical trinity: what a plaintiff must prove 🔗

To succeed in a passing off action, the plaintiff must establish three elements – often called the classical trinity:

Goodwill or reputation: The GI must have an established goodwill in the market. Consumers must associate the indication with goods of a specific geographic origin and quality. The stronger the evidence of market recognition – sales figures, trade usage, consumer surveys – the better the case.

Misrepresentation: The defendant must have made a false representation likely to cause the public to believe their goods originate from the region protected by the GI. This misrepresentation need not be intentional, but it must be capable of misleading a reasonable consumer.

Damage: The plaintiff must show that the misrepresentation has caused, or is likely to cause, actual damage to the goodwill of the genuine GI. This could be direct economic loss, dilution of the GI’s reputation, or erosion of its distinctiveness.

The classical trinity was crystallized in the English case of Reckitt & Colman Products Ltd. v. Borden Inc. (1990) – the “Jif Lemon” case – and has been consistently applied by Indian courts in both trademark and GI contexts.

A concrete example: Darjeeling tea before registration 🔗

The protection of “Darjeeling” tea is one of the clearest illustrations of passing off in the GI context. Even before Darjeeling tea was registered as India’s first GI in 2004, the Tea Board of India had been using passing off actions to prevent unauthorized use of the “Darjeeling” name for tea not grown in the specific geographical area of Darjeeling, West Bengal. Tea produced in countries like Kenya, Sri Lanka, or Nepal was regularly being passed off as Darjeeling tea – and courts recognized the goodwill associated with the name even in the absence of a statutory registration.

The key differences: a side-by-side comparison 🔗

Registration 🔗

This is the most fundamental difference. Infringement requires a registered GI – there is no way around this. Passing off requires no registration at all; it can protect a GI purely on the strength of its acquired market goodwill. As iPleaders notes, once a GI is registered, if a passing off action is already pending, the scope of that action is actually broadened by the registration – showing how the two remedies can interact dynamically.

Legal basis 🔗

Infringement is a statutory tort – it arises from specific provisions of the GI Act. Passing off is a common law tort – it arises from longstanding judicial principles inherited from England’s common law tradition and absorbed into Indian jurisprudence. This distinction affects both the nature of the court’s analysis and the type of evidence that matters most.

Burden of proof 🔗

In an infringement case, registration itself serves as prima facie evidence of validity under Section 23. The plaintiff’s burden is relatively streamlined. In a passing off case, the plaintiff carries a heavier burden – they must independently establish the existence of goodwill, prove misrepresentation, and demonstrate actual or probable damage. There is no shortcut equivalent to a registration certificate.

Who can sue 🔗

Under the GI Act, only the registered proprietor or an authorized user of a registered GI can bring an infringement action. In certain cases, the Registrar of GIs may also bring action on behalf of beneficiaries. In a passing off action, any producer who has established goodwill in the indication – registered or not – may bring suit. This makes passing off more accessible in some situations, particularly for producer communities that haven’t organized themselves formally enough for GI registration.

Scope of protection 🔗

Infringement, being statutory, provides clear and predictable protection as defined by the Act. Passing off, being common law, is more flexible – courts have wide discretion – but also more uncertain, since the outcome depends heavily on the strength of evidence of goodwill and reputation. As IP and Legal Filings points out, proving passing off for GIs is not easy precisely because establishing collective goodwill among a community of producers requires substantial and often complex evidence.

Strategic considerations: which remedy to choose? 🔗

For producers and legal practitioners, the choice between infringement and passing off is not always binary – and in many cases, both actions can be pursued simultaneously. The GI Act does not bar a passing off action even where a registered GI is involved, so plaintiffs often plead both in the alternative.

However, the strategic considerations differ significantly. If the GI is registered, an infringement action is generally the stronger and more efficient route – the evidentiary burden is lower, the statutory framework is clear, and the remedies under Section 51 of the GI Act (including injunctions, damages, and account of profits) are well-defined. Registration also eliminates the need to re-litigate the question of the GI’s validity each time.

If the GI is not yet registered – or if there is any uncertainty about the registration’s validity – a passing off action becomes the primary line of defence. This is especially relevant for GIs that are culturally significant and well-known in the trade, but whose producers have not yet completed the registration process. The lesson for producer communities is clear: building and documenting goodwill over time is just as important as pursuing registration, because it strengthens both types of claims.

The interplay with remedies 🔗

It is worth noting that the remedies available in a passing off action are the same as those available in an infringement action – injunctions, damages, delivery of infringing goods for destruction. The procedural venue is also the same: under Section 66 of the GI Act, both suits must be filed in a District Court (or a High Court with original jurisdiction). So while the legal basis differs, the courtroom experience and the ultimate relief sought are largely parallel.

Lessons from landmark cases 🔗

The interplay between infringement and passing off has been tested in several significant cases. In Tea Board India v. ITC Limited (2011), the Calcutta High Court examined whether ITC’s use of the name “Darjeeling Lounge” in its hotel infringed the registered Darjeeling GI. The court held it did not amount to infringement since ITC was not selling tea under that name in a misleading way – but the case underscored how courts carefully scrutinize the factual context when both infringement and passing off are pleaded. In Mohan Meakin Ltd. v. A.B. Breweries Ltd. (1980), long before the GI Act existed, a court held that marketing whisky produced in India as “Scotch whisky” constituted passing off, even though the defendants argued “Scotch” merely described a style. These cases reveal that courts treat GI misrepresentation seriously – and that passing off doctrine has been a vital protective tool even in the absence of statutory registration.

Why the distinction matters beyond the courtroom 🔗

The difference between infringement and passing off is not just a doctrinal curiosity – it has real consequences for how producers, governments, and legal practitioners approach GI protection. Registration under the GI Act is not mandatory in India, but as legal experts consistently point out, it provides far stronger and more certain legal protection. Producers who rely solely on passing off face a much harder evidentiary task and greater unpredictability in litigation. At the same time, passing off remains an indispensable backstop – ensuring that even GIs with deep cultural and market significance are not left legally defenceless simply because formal registration has not been obtained.

For India, which has a rich and diverse landscape of GI-eligible products – from Kancheepuram silk to Nagpur oranges to Mysore silk – the dual-track system of infringement and passing off ensures that the law can respond to the full spectrum of GI misuse, regardless of registration status. The two remedies are not rivals; they are complements, and understanding their precise differences is what allows legal practitioners to deploy them most effectively.

What do you think? Given that registration significantly strengthens a GI infringement claim, why do you think many producer communities in India still delay or avoid formally registering their geographical indications? And in a case where a GI has immense cultural goodwill but no registration, should courts adopt a more relaxed standard for proving passing off – or would that risk undermining the incentive to register?

References

1. https://ipindia.gov.in/act-1999.htm
2. https://www.altacit.com/resources/gi-geographical-indications/the-protection-of-geographical-indication-in-india/
3. https://blog.ipleaders.in/geographic-indication-law-in-india/
4. https://www.ipandlegalfilings.com/geographical-indications-and-passing-off-in-india-safeguarding-traditional-crafts-in-the-global-marketplace/
5. https://thelegalschool.in/blog/geographical-indications-of-goods