Geographical indications: right to use, infringement, remedies and conflict with trade marks

1. Right to use a geographical indication

• Section 21(1)(a): the registered proprietor and the authorised users may obtain relief for infringement.
• Section 21(1)(b): the authorised user has the exclusive right to use the GI in relation to the goods for which it is registered, subject to any conditions and limitations on the register (section 21(2)).
• Several authorised users do not acquire exclusive rights against each other merely by registration; each has against outsiders the rights of a sole user (section 21(3)).
• No unregistered GI action: no one may sue for infringement of an unregistered GI, but passing off remains (section 20).
• Non-transferable: a GI cannot be assigned, transmitted, licensed, pledged or mortgaged; on the death of an authorised user his right devolves on his successor in title (section 24). The right stays with the place and its producers.
• Prima facie evidence: the certificate of registration is prima facie evidence of validity (section 23).
• Implied warranty: on sale of goods bearing a registered GI, the seller is deemed to warrant that the indication is genuine (section 59).

A producer in the area who is not registered as an authorised user cannot claim the exclusive right; he must apply under section 17.

2. Misleading use and infringement: section 22

A registered GI is infringed by a person who, not being an authorised user:

• (a) uses the GI in the designation or presentation of goods in a way that indicates or suggests that the goods originate in a place other than their true place of origin, in a manner which misleads persons as to the geographical origin;
• (b) uses any GI in a manner that constitutes an act of unfair competition, including passing off. Unfair competition means any act contrary to honest practices in industrial or commercial matters, and is deemed to include acts creating confusion with a competitor, false allegations discrediting a competitor, and indications misleading the public as to the nature, manufacturing process, characteristics, suitability or quantity of the goods (the language comes from Article 10bis of the Paris Convention);
• (c) uses another GI which, though literally true as to the place of origin, falsely represents that the goods originate in the place of the registered GI.

Additional protection (section 22(2) and (3)). For goods notified by the Central Government, a non-authorised user infringes by using the GI on goods not originating there even if he indicates the true origin, uses it in translation, or adds words such as “kind”, “type”, “style” or “imitation”. This mirrors Article 23 of TRIPS, which gives such absolute protection only to wines and spirits; India has argued in the WTO for extending it to all goods.

Exhaustion (section 22(4)). Further dealing, processing or packaging of goods lawfully acquired from an authorised user is not infringement, unless their condition is impaired after being put on the market.

3. Remedies

• Civil. A suit for infringement, relating to any right in a registered GI, or for passing off, in a court not inferior to a district court; the plaintiff may sue where he resides or carries on business (section 66). Relief: injunction (including ex parte and interlocutory orders for discovery, preservation of evidence and freezing of assets), and at the plaintiff’s option damages or an account of profits, with delivery-up of infringing labels for destruction (section 67). Authorised users must be impleaded in proceedings (section 68).
• Criminal. Falsifying or falsely applying a GI (section 39) and selling goods with a false GI (section 40): imprisonment of six months to three years and fine of fifty thousand to two lakh rupees; enhanced punishment for repeat offences (section 41); forfeiture of goods (section 46). Falsely representing a GI as registered attracts a penalty (section 42).
• Rectification before the Registrar or the High Court (section 27).

Courts have applied these principles to place names. The Bombay High Court restrained an Indian distiller from selling whisky as “Blue Scotch” at the instance of the Scotch Whisky Association (1992), on the footing of passing off. On the other hand the Calcutta High Court refused the Tea Board an injunction against the “Darjeeling Lounge” at an ITC hotel (2011), holding that use of the word for a hotel lounge did not suggest that tea came from Darjeeling and was not infringement of the GI or the certification mark.

4. Conflict between trade marks and geographical indications

A GI is a collective name for goods of a place; a trade mark is an individual sign of one trader. A conflict arises when a trader registers or uses a GI as his trade mark. Chapter V of the Act deals with this.

• Section 25. The Registrar of Trade Marks shall, on his own or at the request of an interested party, refuse or invalidate registration of a trade mark which (a) contains or consists of a GI for goods not originating in that place, if its use would confuse or mislead as to the true place of origin, or (b) contains or consists of a GI for goods notified under section 22(2).
• Section 26(1). A trade mark containing a GI applied for or registered, or used, in good faith before the commencement of the Act or before the GI application is protected: its validity and the right to use it are not prejudiced.
• Section 26(2). The Act does not protect a GI identical with a term customary in common language as the common name of goods in any part of India on or before 1 January 1995.
• Section 26(3). A person may use his own name or his predecessor’s name, unless used so as to mislead.
• Section 26(4). No action against a trade mark is possible after five years from the date the infringing use became known to the GI proprietor, or from registration of the mark if it was published, provided the GI is not used or registered in bad faith.
• Section 9(1)(b) of the Trade Marks Act independently bars marks consisting exclusively of indications of geographical origin, and section 9(2)(a) marks that deceive.

5. GI and trade mark distinguished

• Owner. A trade mark belongs to one person or company; a GI belongs to the producers of a region collectively, registered through an association or authority.
• Function. A trade mark tells the buyer who made the goods; a GI tells him where they were made and that they have qualities due to that place.
• Link to place. A trade mark need have no connection with any place; a GI must.
• Transfer. A trade mark can be assigned and licensed (sections 37 to 45 and 48, Trade Marks Act); a GI cannot (section 24, GI Act).
• Subject matter. Trade marks cover goods and services; GIs only goods.
• Who may use. Only the proprietor and licensees may use a trade mark; every producer in the region meeting the standards may become an authorised user of a GI.
• Common features. Both are distinctive signs, are registered for ten years and renewable, are administered by the Controller General, and are protected by infringement suits, passing off and criminal sanctions.

How this is examined

February 2025 set notes on “Right to use Geographical Indications” and on “infringement of geographical indications”; August 2024 a note on “differences between Geographical Indications and Trade Marks” and an essay on the “protections available for geographical indications in India”. Sections 1, 2 and 5 are self-contained short notes. For the essay on protection, combine registration, section 21, section 22 and the remedies in section 3.