IPR
Topic 71 GI Infringement
Topic 71 — Rights, Infringement, and Remedies for GIs
GI registration confers exclusive rights upon the registered proprietor and authorised users — but the rights operate distinctively from patents or trademarks. The rights are collective (not individual), perpetual (renewable indefinitely), and territorial (operate within the registered geographic and product scope). Section 22 codifies the effect of registration; Section 25 defines infringement; Sections 27-32 provide civil remedies; Sections 39-44 establish criminal offences. The Indian GI Act provides enhanced civil and criminal protections — Section 39 makes falsifying a GI a criminal offence with imprisonment up to 3 years and fine up to ₹2 lakh. Recent enforcement cases — Tea Board v. ITC (Cal HC 2011, Darjeeling Lounge), Scotch Whisky Association v. Golden Bottling (Del HC 2006), Tirupati Laddu (2009), and the 2025 Kolhapuri Chappals controversy with Italian brand Prada — illustrate the operational landscape. This topic walks through the entire rights framework, infringement test, remedies, recent jurisprudence, and strategic considerations.
1. Rights and Remedies Architecture
Section | Subject |
|---|---|
Section 22 | Effect of registration; rights conferred. |
Section 23 | Homonymous GIs. |
Section 24 | Prohibition of assignment, transmission, etc., of GI. |
Section 25 | Infringement of GI. |
Section 26 | Acts not constituting infringement. |
Section 27 | Civil reliefs. |
Section 28-29 | Costs and procedure. |
Section 30-32 | Limitations on actions. |
Section 39 | Falsification of GI — criminal offence. |
Section 40-44 | Other criminal offences. |
2. Section 22 — Effect of Registration
A. Section 22(1) — Bundle of Rights
Section 22(1) "A registered geographical indication shall confer on the registered proprietor and the authorised user— (a) the exclusive right to the use of the geographical indication in relation to the goods in respect of which the geographical indication is registered; (b) the right to obtain relief in respect of infringement of the geographical indication in the manner provided by this Act." |
B. The Two Pillars
a EXCLUSIVE USE in registered scope | b INFRINGEMENT RELIEF civil + criminal |
C. Holders of Rights
- Registered proprietor — the producer association, organisation, or authority.
- Authorised users — individual producers registered as such under Section 21.
- Both can independently bring infringement actions.
3. Section 24 — Prohibition of Assignment
Section 24 "Notwithstanding anything contained in any law for the time being in force, any right to a registered geographical indication shall not be the subject matter of assignment, transmission, licensing, pledge, mortgage or any such other agreement: Provided that on the death of an authorised user his right in a registered geographical indication shall devolve on his successor in title under the law for the time being in force." |
A. Why Non-Transferable?
Section 24 reflects the fundamental nature of GIs:
- GIs are collective rights — not individually owned commodities.
- Rights are tied to geographic origin — cannot be separated from the territory.
- Transfer would defeat the purpose — linking production to specific region.
- Authorised user rights die with the individual; no inheritance beyond legal succession.
✅ GI vs Trademark — the operational difference Section 24 makes GIs structurally different from trademarks: Trademark: · Assignable, licensable, mortgageable. · Owned by individual entity. · Transferable as commercial asset. · Can be acquired, sold, used as security. Geographical Indication: · NOT assignable, licensable, or transferable. · Belongs collectively to producer community. · Tied permanently to geographic origin. · Cannot be acquired or sold. This structural difference means GI strategy is fundamentally different from trademark strategy. There is no "GI portfolio building" through acquisition — GIs are inherent in geography. |
4. Section 25 — Infringement of GI
Section 25 "A registered geographical indication is infringed by a person who, not being an authorised user thereof,— (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 (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:— (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; (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; (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." |
A. Three Categories of Infringement
Sub-clause | Category | Nature |
|---|---|---|
Section 25(a) | False origin indication misleading the public | Suggests goods originate in different area than true place. |
Section 25(b) | Unfair competition / passing off | Acts contrary to honest practices in commerce. |
Section 25(c) | Literally true but falsely representing | True about territory but creating false connection to GI region. |
B. Section 25(a) — Misleading the Public
Examples of Section 25(a) infringement:
- Selling tea grown in Assam labelled "Darjeeling" — false origin; misleading.
- Selling sarees from any region labelled "Banarasi" — misleading geographic claim.
- Selling rice grown outside Indo-Gangetic plains as "Basmati" — Basmati v. Texmati.
C. Section 25(b) — Unfair Competition
Section 25(b) covers broader unfair competition claims:
- Creating consumer confusion about competitor establishment, goods, activities.
- False allegations to discredit competitor.
- Misleading regarding nature, process, characteristics, suitability of goods.
D. Section 25(c) — Translations and Style References
Section 25(c) addresses subtle infringement:
- Using "Darjeeling-type tea" — literally true but creating false GI association.
- "Kolhapuri-style chappals" — appropriating GI reputation through similar terms.
- Translations that mislead — using foreign-language equivalents.
5. Leading Cases — Tea Board v. ITC
📖 Tea Board v. ITC Limited, 2011 (Cal HC) Facts — ITC operated "Darjeeling Lounge" at ITC Hotel in Sonar (since 2003). Tea Board of India (registered proprietor of Darjeeling Tea GI) sued ITC alleging infringement and dilution of the Darjeeling GI. ITC argued that "Darjeeling" is also the name of a town and refers to many things beyond tea. Holding — Calcutta HC ruled in favour of ITC. Key holdings: (i) Tea Board's GI registration was for tea — not for the word "Darjeeling" generally. (ii) "Darjeeling Lounge" did not relate to tea — it was a hotel lounge. (iii) The lounge predated the GI Act — limitation issue. (iv) GI rights are limited to the goods in respect of which registered. Significance — Important precedent on the SCOPE of GI protection. GIs do not extend to ALL uses of the place name — only to uses on the goods for which registered. However, the case also recognised the principle that GIs CAN extend beyond goods to prevent reputation dilution. |
A. The Lessons from Tea Board
- GI scope is product-bounded — not unlimited use of place name.
- Reputation dilution claims are recognised but limited.
- Pre-existing uses (before GI Act) may continue with care.
- Service categories (lounge, restaurant) require careful GI strategy.
6. Scotch Whisky Association v. Golden Bottling
📖 Scotch Whisky Association v. Golden Bottling Limited, 2006 (32) PTC 656 (Del HC) Facts — Indian company Golden Bottling sold spirits as "Scotch" — implying origin from Scotland. Scotch Whisky Association (SWA) sued for passing off and infringement of geographical indication "Scotch". Holding — Delhi HC granted injunction restraining Golden Bottling from using "Scotch". Key holdings: (i) "Scotch" is a recognised GI for whisky from Scotland (despite not being separately registered in India at the time). (ii) Passing off action is available even for unregistered GIs. (iii) Use of "Scotch" by Indian company for non-Scottish whisky misleads consumers. (iv) Section 22(3) enhanced protection applies for spirits. Significance — Foundational case for GI passing-off protection. Established that: (i) Even unregistered GIs can be protected through passing-off. (ii) Foreign GIs receive substantive protection under Indian law. (iii) Wines and spirits enjoy enhanced TRIPS Article 23 protection. |
7. Tirupati Laddu Case
📖 Tirupati Laddu (Andhra Pradesh GI), 2009 (Madras HC) Facts — Tirumala Tirupati Devasthanams (TTD) registered "Tirupati Laddu" as a GI in 2009. Several other temples and bakeries used "Tirupati Laddu" for their preparations. Holding — Madras HC examined the scope of GI protection. The case raised significant issues about religious products as GIs: (i) Whether religious offerings (prasadam) qualify as GIs under Section 2(1)(e). (ii) Whether multiple temples in the region could collectively use the name. (iii) Section 9(d) — whether registration would hurt religious sensitivities. Resolution — The TTD's GI registration was upheld; the Court recognised the unique identity of TTD's laddu preparation through specific recipe, ingredients, and temple kitchen at Tirumala. Other producers cannot use "Tirupati Laddu" without authorisation. Significance — Recognition of religious-cultural products as GIs. Highlights need for careful definition of geographic and cultural boundaries. |
8. Recent 2024-25 Cases
📖 Asociacion De Productores De Pisco AG v. Union of India & Ors. (Del HC) Facts — Peru's producer association for Pisco (a grape brandy) challenged India's decision regarding registrations. Holding — Delhi HC explained the foundational role of GIs: "The GI Act seeks to protect and promote goods with a specific geographical origin. The Act was enacted to prevent unauthorized persons from misusing GIs and in order to protect consumers from deceptive trade practices, and to promote economic prosperity and protection to the producers of unique goods attached to a region." Significance — Recent foundational statement on GI Act objectives. |
📖 Kolhapuri Chappals Controversy, 2025 Facts — Italian fashion brand Prada launched footwear designs allegedly inspired by GI-tagged Kolhapuri chappals (Maharashtra/Karnataka). The Indian artisan community and authorities challenged this as appropriation of cultural heritage. Significance — 2025 international controversy highlighting: (i) The need for stronger international GI enforcement. (ii) Risk of foreign brands using traditional designs without authorisation. (iii) Consumer confusion in international markets. (iv) Limits of Indian GI protection abroad — relies on foreign country registrations and TRIPS protections. |
9. Section 27 — Civil Remedies
Section 27 "(1) The relief which a court may grant in any suit for infringement or for passing off referred to in section 26 includes injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or account of profits, together with or without any order for the delivery-up of the infringing labels and indications for destruction or erasure." |
A. Available Civil Reliefs
- Injunction — interim and permanent.
- Damages OR account of profits (election by plaintiff).
- Delivery-up of infringing labels/indications for destruction.
- Costs of litigation.
B. Forum
GI infringement suits proceed:
- District Court — within pecuniary jurisdiction.
- High Court — above pecuniary limit; or where defendant counter-claims for cancellation.
- Commercial Courts framework.
10. Section 39 — Falsification of GI (Criminal)
Section 39 "(1) Whoever falsifies a geographical indication or falsely applies to goods a geographical indication, shall, unless he proves that he acted without intent to defraud, be punishable with imprisonment for a term which shall not be less than six months but which may extend to three years, and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees: Provided that the court may, for adequate and special reasons to be mentioned in the judgement, impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand rupees." |
A. Section 39 — Penalty Structure
6m MIN PRISON imprisonment | 3y MAX PRISON imprisonment | 50K MIN FINE rupees | 2L MAX FINE rupees |
B. Other Criminal Provisions
Section | Offence | Penalty |
|---|---|---|
Section 40 | Selling goods to which false GI is applied. | Same as Section 39. |
Section 41 | Enhanced penalty for second/subsequent conviction. | Up to 3 years + ₹2 lakh. |
Section 42 | Falsely representing GI as registered. | Up to 3 years + ₹2 lakh. |
Section 43 | Improperly describing place of business. | Up to 3 years + ₹2 lakh. |
Section 44 | Falsifying entries in Register. | Up to 2 years + fine. |
✅ Section 39 vs Trademark Section 103 GI Section 39 and TM Section 103 (criminal falsification) are similar but distinct: · Both — 6 months minimum imprisonment; 3 years maximum. · Both — minimum fine ₹50K; maximum ₹2L (TM Section 103). · Both — cognizable, non-bailable. · TM Section 115 — specific provision for cognizance procedure. GI criminal track is comparatively less invoked than TM Section 103. Most GI enforcement proceeds through civil remedies (injunctions, damages) due to complexity of establishing GI scope and proving intent to defraud. |
11. Section 26 — Acts Not Constituting Infringement
Section 26 (Material) "(1) Where a person uses a geographical indication— (a) where such use, in accordance with honest practices in industrial or commercial matters, does not unfairly take advantage of, or is not detrimental to, the distinctive character or reputation of the registered geographical indication; (b) where the use of the indication is in accordance with the law for the time being in force..." |
A. Permitted Uses
Section 26 permits:
- Honest descriptive use — describing characteristics, quality (Section 26(1)(a)).
- Use in accordance with applicable law.
- Use of person's own name or place of business.
- Use predating GI registration (with limitations).
12. Practical Strategy
✅ For GI proprietors and authorised users — twelve points Register the GI through legitimate producer association. Build a registered authorised user pool — only authorised users can use GI commercially. Establish quality control mechanisms — sampling, inspection, certification. Maintain detailed records of authorised user compliance. For market surveillance, monitor for counterfeits — particularly in export markets. For unauthorised use, send cease-and-desist letters before litigation. For Section 25(a) infringement (false origin), pursue criminal Section 39 alongside civil action. For Section 25(b) unfair competition, document evidence of consumer confusion. For Section 25(c) translations/style references, document specific examples. Coordinate with state agricultural/handicraft departments for institutional support. For international counterfeits, leverage TRIPS protections and foreign country GI laws. Build consumer awareness campaigns — educate consumers on GI tags. |
🎯 EXAM POINTERS — TOPIC 71
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