PROTECTION OF TRADE MARKS UNDER

TRADE MARK ACT, 1999 – AN ANALYTICAL

STUDY

THESIS SUBMITTED TO THE JIWAJI UNIVERSITY GWALIOR

IN PARTIAL FULFILMENT OF THE REQUIREMENTS
FOR THE AWARD OF THE DEGREE OF

DOCTOR OF PHILOSOPHY
IN
LAW
2020

Signature of the Supervisor Submitted By

Prof. (Dr.) SANJAY KULSHRESHTHA PRAGYA CHAURASIA

(Institute of Law, Jiwaji University, Gwalior) Roll No. : 1702
Enrollment No. : B-0683

RESEARCH CENTER

Institute of Law, Jiwaji University, Gwalior (M.P.)

 CERTIFICATE OF SUPERVISION
This is to certify that Miss. Pragya Chaurasia research scholar in Institute Of Law, Jiwaji
University, Gwalior, M.P. (INDIA) has selected his topic of PH.D. Thesis entitled,
“PROTECTION OF TRADE MARKS UNDER TRADE MARKS ACT, 1999-
ANANALYTICAL STUDY” on my advice. The Above entitled work done by Miss Pragya
Charasia under my guidance and supervision for the degree of Doctor of Philosophy in
Management of Jiwaji University Gwalior (M.P.). I certify and that the candidate has put in an
attendance of more than 200 days with me.

To the best of my knowledge and belief the thesis:

1- Embodies the work of the candidate himself.

2- Has duly been completed
3- Fulfill the requirement of the ordinance relating to the Ph.D. Degree of the University.
4- Is up to the standard both in respect of contents and language for being referred to the
examiner.

I have made various suggestions while supervision his work and he has incorporated
many of them. In view of this I deem this work fit for evaluation.

I wish her luck.

Signature of Supervisor Submitted by

PROF. (DR.) SANJAY KULSHRESHTHA PRAGYA CHAURASIA

(Institution of Law) Roll No.: 1702
Jiwaji University Enrollment No. : B-0683
Gwalior (M.P.)
 DECLARATION OF THE CANDIDATE

It is hereby declared that the present thesis entitled “Protection of Trade Marks Under
Trade Marks Act, 1999 –An Analytical Study” is an original work conducted under the
supervision of Prof. (Dr.) Sanjay Kulshreshtha Institute of Law, Jiwaji University Gwalior
(M.P.) approved by Research Degree Committee. I have put it more than 200 days of attendance
with the supervisor at the center.

I further declare that to the best of my knowledge the thesis does not contain any part of
my work has been submitted for the award of any degree either in this university or in any other
university/Deemed university without proper citation.

Signature of Supervisor Submitted by

PROF. (DR.) SANJAY KULSHRESHTHA PRAGYA CHAURASIA

(Institution of Law) Roll No.: 1702
Jiwaji University Enrollment No. : B-0683
Gwalior (M.P.)
 ACKNOWLEDGEMENT

I bow to almighty GOD, the powerful and merciful he fulfill my wishes and gave me
strength to finish this work,

I navigate my deep sense of gratitude toward my mentor Prof. (Dr.) Sanjay Kulshreshtha,
Institute Of Law, Jiwaji University Gwalior, MP (INDIA) who persuaded me to work on “
Protection of Trade Marks Under Trade Marks Act, 1999- An Analytical Study. It was his savvy
pilotage and constant inspiration coupled which amicability which enabled me to present this
exiguous endeavor in its present visage.

I own my profound gratitude to all Professors of Institute Of Law, Jiwaji university,

Gwalior for his sympathetic attitude, constant encouragement and for providing necessary
facilities to complete this study.

I feel immense pleasure in recording my thanks and obeisance to Dr. Sanjay

Khulshreshtha who always stood by me and groomed me to summage the vistas of cognition.

I shall ever remain indebted to ……………………………………….for their good

wishes and encouragement.

I salute and venerate to my parents, for their love and benedictions from cradle to this
day.

I register my juxtaposition with my friend ……………and beloved brothers & sisters for
their love and affection.

I am grateful to my relatives for their affability and civility.

I also express my thanks to the office member of librarians of different University, who
have rendered great assistance to me in process of the collection of materials.

I mention Mr. Prabhakar Sharma Advocate, M.A., LL.M. Mathura who took all pains in
computerizing my thesis to the best of her efforts an my satisfaction.

I feel heavily indebted to express my most sincere thanks to all those who have helped
me in one way or the other in the completion of academic endeavor.

Thanks.

PRAGYA CHAURASIA
 ABSTRACT

Trade Marks law generally deals with the protection of marks from being infringed. A
situation if arises, wherein a person not authorized by the Trade Mark owner, uses the identical
or similar mark for selling any goods, which are directly competitive with, or has any relation
with the goods, sold by the Trade Mark owner, is considered an infringement of a Trade Mark
and accordingly relief is granted to the owner of Trade Mark by the court.

The owner of the mark can prevent the use of similar or identical signs by competitors of
such marks can lead to confusion. By this way similar low quality substitution will be prevented
from replacing good quality ones. The distinctiveness is maintained as well as sales are much
smoother as people are able to identify with that particular commodity or service.

Registration of Trade Mark is not mandatory but in the present day scenario there is
increasing infringement and lot a cases are challenged so it is advisable to register Trade Marks.

There is also a need for Trade Mark to be globally protected. This is said because most
have regional or local name brands and most constantly push these weak names while struggling
to get global clearance.

The Lanham (TRADE MARK) Act, 1946 Title 15, chapter 22 of the United State Code
is a piece of legislation that contains the federal statute of Trade Marks law in the United State.
The Act was passed on 5th July 1946 and signed into law by President Harry Truman. In India the
law relating to Trade Marks is governed by the Trade Marks Act, 1999 which came into force
with the effect from 15th September 2003 vide Notification S.O. 1048 (E) dated 15th September
2003 and the Trade Marks Rules, 2002.

Accordingly to USA, once your Trade Mark is registered, you may think you are
covered. After all, no one can register a conflicting Trade Mark, because the Trade Mark
examiners will see your pre-existing Trade Mark registration and block any new applications.
But that assumes that your judgment matches the judgment of the Trade Mark examiner assigned
to look at new applications.1

1
http://www.wellsiplaw.com
 The Act provides both civil and criminal law sanctions for the misuse of registered Trade
Marks. Section 93 of the ACT makes enforcement of the criminal sanctions the duly of the local
weights and measures Authority (Usually the Trading Standard Department) and imports
enforcement powers from the Trade Descriptions Act. Similar criminal law provisions are
written into the related Copyright Designs and Patents Act.

PURPOSE OF THE RESEARCH

Basically the main object of this study is to examine the crucial instances of hurdles in
the way of the Trade Marks user and the protection given to the Trade Marks under present
legislations in India and Abroad. Almost all countries in the world register and protect Trade
Marks. Each national or regional office maintains a Register of Trade Marks containing full
application information on all registrations and renewals, which facilitates examination, search
and potential opposition by third parties. The effect of the registration are, however, limited to
the country concerned.

The purpose of the above research as following:

1- The purpose is to find out the loopholes regarding remedies which are not appropriate in
present Indian Trade Marks System.
2- To compare the provisions of Indian Trade Mark System with USA, UK & Other
Countries Trade Mark System
3- To analyses the contribution of judiciary in Indian scenario.
4- To specially analyses the provisions of Trade Mark Laws whether these are appropriate
and justified for Trademark Proprietor or not?
5- After comparison and analysis of contribution of judiciary will come out with appropriate
suggestions so that present system of Trade Marks should become more transparent,
effective, reasonable and justified.

RESEARCH METHODOLOGY

The research methodology adopted in this study is primarily the “Doctrinal Method” of
research. The researcher has made an effort to critically examine the secondary sources like
books, articles, journals, case-laws and e-resources. E-resources have majorly contributed in
writing of this thesis for getting the most relevant and latest information on the web which has
helped the researcher to explore the subject through various dimension.

The research based on the two type of the material i.e., primary material and secondary
materials. Primary materials consist of the text of laws, declarations etc. on the issue. Secondary
materials consists of books, articles, encyclopedia, research papers, newspapers and magazines.
The research also include the study of case laws. The research is analytical and descriptive in
nature.

Sources

Primary and Secondary sources of information have been utilized in the writing of this
research.

Mode of Citation

A uniform mode of citation has been followed throughout the research work i.e. ILI
Format.

REVIEW OF THE LITERATURE

This review examines existing research on the issues of Trade Mark Law and its
comparison with other countries. The focus of the review is primarily on the comparative study,
but the work related to infringement and Passing off issue of Indian Laws vis-à-vis legal
framework is also presented whether relevant.

The literature review is primarily based on the research work done by the researcher for
the title “PROTECTION OF TRADE MARKS UNDER TRADE MARKS ACT, 1999- AN
ANALYTICAL STUDY” and this awarded Ph.D. the ultimate object of the study is to compare
of laws between India and USA with other countries and also present the contribution of India
Judiciary in protecting the Trade Marks.

The literature review for the thesis covers many books, articles, online database is a
source of information, the literature review therefore literature review.
 The literature is simply defined as a source of information for a research which includes
books, articles, abstract, conventions, legislations, reviews, websites etc.

BOOKS

1- Narayanan P., Trade Marks, Trade Name & Passing off Cases, Eastern law
House, Kolkata, 1997
The legal concepts and the principles expounded by the British Courts on intellectual
Property, during the last two centuries, covering Trade Marks, Trade Names and
Passing Off are of the universal application and the textbooks and the law on the
subject, throughout the world, are modeled on those English principles.
In these two volumes the author has edited and digest about 1600 of such decisions
chronologically with head noted and resume of facts and summary of decisions
making it a comprehensive.
2- Kitchen David, Mellor, James, Law of Trade Mark and Trade Mark Names,
(13th edition, 2001)
This study covers the many untouched topic of Trade Mark and discuss the origin and
definitions of Trade Mark.
3- Narayan P., Intellectual Property Law, Eastern Law House, Kolkata, 3rd edition
2001
The present work is an authoritative commentary on the entire gamut of this
multifaceted law and it highlights not only all the salient features of the law
legislations but also the essential and useful information about all branches or IPR
law. Those who are interested in intellectual property rights need have a basic
knowledge of IPR laws and their impact on man’s daily life and work this
illuminating guide meets that need.
4- Watal Jayashree, Intellectual Property Right in WTO & Developing Countries,
New Delhi, Oxford University Press, 2001.
Although it is common knowledge that the compliance of developing countries with
the agreement in Trade-Related Aspects of intellectual Property Rights (TRIPS) has
become a serious stumbling block in the WTO (World Trade Organisation) agenda,
 The underlying reasons why this is so have not been dispassionately analyzed until
the appearance of this book.
Here for the first time, there a through and secure foundation on which international
trade lawyers and business people can build a global Intellectual Property regime that
is both productive and fair. The implication of the TRIPS regime with its enormous
effect on national and global Strategies for healthcare, agriculture and environment,
among other crucial sector of the world economy is clearly among the most critical
project currently under way in the field of international relations.
As a former TRIPS negotiator for India, Jayashree Watal bring great authority to her
account of the benefit and pitfalls of TRIPS compliance for developing countries. She
provides a detailed understanding of how TRIPS was negotiated at the Uruguay
Round, how various countries have implemented it so far, and how the WTO
monitors compliance. She reveals how the WTO dispute settlement process has
worked to date in matter involving TRIPS, and how it is likely to deal with new
issues that arise.
Most important, she explains how developing countries can interpret TRIPS to their
best advantage and how to ensure that the ‘constructive ambiguity’ that characterizes
the agreement remains flexible at need.
5- V.K. Unni, Trade Marks & the Emerging Concept of Cyber Property Rights,
Eastern Law House, 2002
A comprehensive overview of the conflicts between internet domain names and Trade
Marks. The present work also covers the aspect of Cybersquatting, the Global efforts
to combat it which paved the way for the enactment of a user-friendly dispute
resolution procedure, the American legislation on Cybersquatting, the situation in UK
and India, the introduction of new domain names like info and the abusive
registration and use of the identifiers in the domain name system.
6- D.P. Mittal, Trade Marks Passing Off & Geographical Indications of Goods Law
& Procedure, Bharat Law House, New Delhi,2002
Some of the topics comprehensively discussed are: Trade Mark, its various concepts,
its meaning, functions and objects. Brand and logo, as and identity of a product and of
a company Registration of Trade Mark, Associated Mark and Certification Mark and
 conditions of Registration. Procedure for registration and the powers of the Registrar.
Exclusive right to use the Trade Mark. Infringement of a registered Trade Marks.
Law of Passing-Off. Assignment and transmission of a Trade Mark.
Law relating to the use of Trade Mark Rectification and correction of the Trade Mark
register. Appeals and Intellectual Property Appellate Board Penalties for falsifying
and falsely applying the Trade Mark of Trade description offences by the companies
are also discussed by the author.
7- Narayanan P., Law of Trade Marks and Passing Off, Eastern Law House,
Kolkata, 2004
In his present work on the intellectual Property Law, Venkateswaran on Trade Marks
and Passing Off is an advanced section wise commentary on the current legislation on
the Law of Trade Marks, Passing-Off and Infringement.
He has studied the concept of Trade Marks and the status of their protection in India
in a very brief and effective manner. The author has discussed comprehensively about
the provisions of infringement of Trade Mark and provide essential to be proved in
action for infringement of Trade Mark.
The author has also been a spurt in litigation to Trade Mark Infringement, this book
comprehensively incorporates up-to-date Indian and foreign case laws and all
landmark judgments reported in premier law journals such as RPC (Reports of
Patents)-oxford and PTC (Parametric Technology Corporation).
This commentary is an essential guide for litigator, Trade Mark agent and Judge, on
the latest position of law on Trade Marks and Geographical Indication in India, UK
and Europe. In this reprint the author has made necessary changes at the relevant
places due to the passing of amendments and new legislations since the publication of
the third edition. The work not only highlights all the salient features of the new
legislations but also the essential and useful information about all branches of IPR
law. The subject matter of each is detailed in separate chapters, topic wise, with a
subject index designed to facilitate quick location of any topic.
The appendices, besides containing texts of all essential Statutes, contain also
relevant extract from the GATT (General Agreement on Tariffs and TRIPS (The
 Agreement on Trade-Related Aspect of Intellectual Property Rights) agreement and
notifications regarding India’s membership of the Paris Convention.
8- Cadclick And Longstaff, A User’s Guide To Trade Mark And Passing Off,
Maxwelton House, 3rd Edition.
This book is a single volume, section-wise for litigators, Trade Mark Agent, Judges,
on the latest positions of law on Trade Mark in India, UK and Europe. This edition
provides up-to-date position on Trade Mark Act and includes latest judicial
developments (refer product brief above) and latest legislation development including
the introduction of Trade Mark rules 2017 which entirely replaces the existing 2002
rules.
9- S.K. Verma & Raman Mittal, Intellectual Property Rights-A Global vision New
Delhi, Universal Law Publication, 2004, ed. (reprint 2006)
Trade Marks and geographical indications, small and medium enterprises, TRIPS
compliance and country reports, teaching and research in IPRs.
10- Kerly, Law of Trade Mark & Trade Marks, Sweet & Maxwell, London, 2005
The author provides full explanation of UK Law of Trade Marks and Trade Names.
Covers classification, registration (UK & European), different types of Marks,
enforcement infringement and litigation. it is also includes coverage of assignments.
Goes through licensing, merchandising and franchising.
Deals with infringement and available remedies. Looks at mediation and arbitration in
the context of Trade Marks. Incorporates recent legislative change such as the Trade
Marks Regulations 2008, the Trade Marks (Earlier Trade Marks) Regulation 2008
and the community Trade Mark (Amendment) Regulations 2008.
11- Ryder Rodney D. Intellectual Property-Concept to Commercialisation, New
Delhi, Mecmillan, 2005
The Text is based on intellectual property law and the specific issues that stem from
the effective management and commercialization of intellectual property.
12- K.C. Kailasam & Ramu Vedaraman, Law of Trade Marks & Geographical
Indication-Law Practice & Procedure, 2005
 Being an exhaustive commentary on the Trade Marks Act, 1999 and also on the
Geographical indication of goods (Registration and Protection) Act, 1999, with rules,
case law, notes, etc.
13- Ryder Rodney D., Trade Mark Advertising & Brand Protection, Macmillan,
2006.
For those of us in the field of Intellectual Property (IP) rights and its management,
Rodney D. Ryder is a familiar name.
Brands have become the single most important asset of many business organisations
today. Trade Marks, Advertising and Brand Protection information the reader of the
various legal measure available to protect brands and offers practical advice on how
different aspects of a brand can be protected. Starting with an analysis of a brand in
management literature, the book moves on to discuss and analyse brand protection
from both marketing and legal perspective. The book consider each aspect of a brand,
that is, its shape, packing, marketing, advertising, etc. to provide a comprehensive
overview of the subject.
The text examines in detail the issue of brand protection on the internet and outlines
brand valuation issues. The book concludes with an analysis of the shortcomings of
the current legal regime and puts forward a proposal to fill in the gaps.
14- Bhandari M.K. (Dr.), Law relating to intellectual Property Right, Allahabad
Central Law Publication Law relating to Intellectual Property Rights, 2006
The author express the various field of Intellectual Property Rights in this book. In
this book the author traditionally express importance of Trade Marks, infringements,
and right of Marks holder.
15- Arora Manish, Guide to Trade Mark Law, Universal Law Publication, 2 nd
Edition, 2007
The author has discussed the important Landmark Judgments relating to infringement
and also cover the International Agreement and treaties for the protection to Trade
Mark like Nice Agreement, Madrid Agreement, Trade Mark Law Treaty, Uniform
Domain Dispute Resolution Policy, 1999.
16- Carios Maria Correa, Trade Related Aspects of intellectual Property Rights : A
Commentary on the TRIPS Agreement, Oxford University Press, 2007
 The TRIPS Agreement is the most comprehensive and influential international treaty
on Intellectual Property Right. It brings intellectual property rules into the framework
of the world Trade Organization, obliging all WTO (World Trade Organisation)
Member States to meet minimum standard of intellectual property protection and
enforcement. This has required massive changes in some national laws, particularly in
development countries.
This volume provides a detailed legal analysis of the provisions of the TRIPS
Agreement, as well as considering their economic implication in different legal and
socio-economic contexts.” “This book examines the obligations imposed on WTO
Members in different fields of intellectual property, and thoroughly explores the
flexibilities that they enjoy in implementing the Agreement.
17- Sreenicasulu N.S. (Dr.), Intellectual Property Rights, New Delhi, Regal
Publications, (6th ed. 2007)
This book is a comprehensive work on the subject Intellectual Property Rights. It
attempts to cover all the areas of Intellectual Property Rights in a clear and composite
way. The editor has attempted to give the reader a complete nutshell on the subject.
The book is a basically a complication of research articles written by academicians,
scholars and people serving in the corporate sector across the country.
It brings out literature on Trade Marks, infringements of the rights of Marks holder.
18- Sarkar J.S. Trade Marks Law And Practice, Kamal Law House, (4 th Edition,
2008)
The book has explained the concept of trademark in a very simple manner. The
author explanations give the reader a keen understanding of the concept of Trade
Mark. He has conducted a multifarious study of the concepts of Trade Mark which
provided strong foundation. Author also dealt with the issue of protection of Trade
Mark and their remedies.
19- Queen Mac Hactor, Charlotter Waelde, Graeme Laurie & Abbe Brown,
Contemporary Intellectual Property Law and Policy Oxford University Press,
Oxford Great Britain, 2nd Edition 2008
An accessible introduction to intellectual property law which provides not only a
comprehensive account of the substantive law, but also discusses the over-arching
 policies directing the legal decision making, as well as controversies and areas for
further debate. Intellectual property law is an increasingly global subject and as such
contemporary Intellectual property introduces the relevant European and international
dimensions to ensure that you can gain a realistic view of the law as it actually
operates.
Explores intellectual property law as an organic and developing discipline, evaluating
the success with which the law has been able to respond to new challenges. The
combination of images and diagrams, with analysis of key cases and key extract are
all incorporated alongside the author commentary to clearly illustrate the core
principles in intellectual property law. Fully updated to reflect the development in the
law and social policies that influence intellectual property protection.
Enhanced cross referencing throughout the book to highlight the overarching themes
and interconnections across the subject as a whole.
20- Rama Sarma, Commentary on intellectual property laws (patents, Designs and
Copyright Law with Protection of Plant Varieties and Farmer’s Right) Law,
Practice and Procedure with Model Agreements, Vol. 2, Lexix Nexis Butter
Worths Wadhwa, Nagpur, 2009
The book provides a comprehensive framework that answers all questions relating to
Intellectual Property Rights. Volume -2 of this book specifically cover Copyright and
Trade Marks Law. The book Cover and exhaustive work on the world Trade Mark
Law that presents an insight of the Trade Mark in different parts of the World. The
Chapter on ‘Disparagement on Trade Mark Laws’ present a series of case laws on
disparagement in India that clarifies the judicial trend in India.
21- Pande Akshat, Valuation on Intellectual Property Assets, Eastern Law House,
Kolkata, 2010
Valuation of assets of the nature of intellectual property treads the thorny path of
complexity. But the economic benefit of IPR as an asset are multiple in nature. The
business house can thus ill-afford to turn a deaf ear to it. The work focuses on the
legal provisions underpinning a valuation exercise and also all the relevant methods
of valuation of IP assets leaving a suitable choice for the values to make.
 The books enters the market with a freshness not perceived hitherto. The author with
his rich experience contribution his erudition in making this work an indispensable
guide to all who have to the harness the fruits of IPR in their practice or pursuits.
22- Wadhera B.L., Law Relating to Intellectual Property- Patents, Trade Marks,
Copyrights, Designs, Geographical Indications, Semiconductor Integrated
Circuits Layout-Design, Protection of Plans Varieties and Farmer’s Rights,
TRIPS, New Delhi, Universal Law Publication, 2011
The overwhelming response of student, lawyers, judiciary and other users attracted by
the past three editions has created an enlarged sense of responsibility. The fourth
edition has been updated keeping with that sense of responsibility and all the new
amendments since the last edition. The book is divided into 8 parts viz. Patents, Trade
Marks, CopyRight, Designs, Geographical Indications, Semiconductor Integrated
Circuit Layout-Design, Protection of Plant Varieties and TRIPS. Latest amendments
vide Trade Marks (Amendments) Rules 2002 have been duly incorporated in the main
text at appropriate places.
New case law have also found a place in the new edition. An effort has been made to
make this book as a complete text book on IPR’s and prevent the reader running from
pillar to post to update himself.
23- Wadhera B.L., Law Relating To Intellectual Property, Universal Law
Publications 4th edition, New Delhi, 2011
This book is overwhelming response of students, lawyers, judiciary and other users
attracted by the past three editions has created as enlarged sense of responsibility and
all new amendments since the last edition regarding to the Trade Marks. The book is
divided into 8 parts in which the 5 th chapter relate to Trade Marks, its infringement
and the remedies which the aggrieved party access by the court. What relief provided
by the court it is very clear and analytical part of this book.
24- Bansal Kumar Ashwini, Law of Trade Marks in India: With Introduction to
intellectual Property, Thomson Reuters, Legal, New Delhi, 2018
The book represents an exhaustive on the topic i.e. “Law of Trade Marks in India:
with Introduction to Intellectual Property”. The literature comprehensive cover an
over all aspects of Trade Marks. The coverage of the books extends from the basic
 knowledge of the Intellectual Property Right and dealing depth the Trade Marks Law.
The books presents lucid material on important concepts of Trade Mark like its role
and function and dealing in detail about the Trade Marks Act, 1999.
The book also incorporate the emerging issues like Trade Marks in advertising and
titles and protection of domain names, The various international conventions and
treaties with regard to Trade Marks and also the position of law in foreign countries
are also covered by this book.

REVIEWED ARTICALS

1- Andress Rahmatian2 in the article “Trade Mark Infringement as a criminal offence”

have explained the meaning and importance of Trade Marks. He discussed criminal
offences in relation to Trade Marks Infringement are set out in section 103 of Trade
Marks Act.
2- Martha Celis3 in the article “Effective use of Trade Mark” have explained the main
goal of limiting the scope of protection of a Trade Marks Registration to meet its
actual use in the market is to create a functional dynamic system that allows the
opportunity for new Trade Marks to be protected.
3- Mr. Sagar Kumar Jaisawal in this article, he tries to explain the scope of Trade
Marks and talks about the types of proceeding where the infringement can be claim.
4- Murugendra B. Tubake, we find that the US law has many advantages over the
Indian Trade Marks Law. So, there should be a provision for supplemental
registration for every State under the Indian Trademark legislation so that the owner
of the mark having short market life and restricted territorial business can be able to
register his mark without Observing procedural formalities. Since Trade Marks are
the face of Trade they represent credibility, reputation and fame of goods or services,
so in an action for infringement suit if the plaintiff proves the bad motive on the part
of the defendant. The practical lawyer http://www.supremecourtcases.com Eastern
Book Company Generated: Friday, January 25th, 2019 the provision should be made

2
ANDREAS RAHMATIAN, “Trade Mark Infringement as A Criminal Offence” , VOL 67 NO.4 PP 670-683, (Jul. 2004)
Available on http://www.jstor.rog/
3
Martha Celis: Effective use of Trade Marks,
http://www.olivares.com.mx/en/knowledge/articles/trademarkarticles/effective use of trademarks
 under the Indian Law to the effect that treble damages should be awarded to the
plaintiff.

LIST OF REVIEWED ONLINE DATABASE

1- www.manupatra.com
The Manupatra is a legal database, which provides the facility to search all online
available materials for research. The researcher has used this legal database to refer
judicial pronouncement under chapter six of his thesis. The database has its own citation.
The following facilities are available at this site:
 Judgments of Supreme Court
 Judgments of High Courts and Other Courts
 Judgment of Tribunals and Commissions
 International Database-Articles, cases, reports etc.
 Business policy
 Corporate law and taxation
 Notification and circulation
 Bare Act (Statutes)/ Rule and Regulations
 Commentaries/ Treaties Committee Reports
 Draft, Ordinance, Stamp Duty Forms, E-books, Articles ETC.
2- www.westlaw.com
This is also a legal database the different between the Manupatra and Westlaw is that the
Westlaw Provides access to judgments of foreign courts especially all European Union
material is also available, international cases, reports, conventions, convents are available
at this site.
3- www.worldtradelaw.net
This is also legal database it provide Agreement on Trade Related Aspects on Intellectual
Property Right.
4- www.ebcwebstore.com
The Practical Lawyer, a monthly journal, is a complete monthly guide to legal news,
happening and updates. It saves your time and energy in search for latest ruling of the
supreme court of India. Also, it provides you with legal articles, important judgments and
 important enactments as well as information about our newly released student & lawyer
editions. Further, a collection of all the 2 issues in a year can serve as a handy reference
for looking up the judgments of that particular year. It gives recent cases on intellectual
Property Laws.

HYPOTHESIS

In the pursuit of making an exhaustive study on the subject, the research has formulated
the following hypothesis:

1. The remedies provided for Trade Mark infringement appear to be inadequate to

protect the interest of the proprietor of Trade Mark. The interest of registration
proprietor is not protected sufficiently by present Trade Mark Indian scenario in
comparison to UK and United States of America.
2. The compensation awarded by Indian Judiciary not seems sufficient and justified.
3. Trademark is an intangible property of its proprietor and it is required to be protected
by law as it is more valuable than that of a tangible property, because the effect of the
Loss of a tangible property is confined to the property itself, but the loss of Trade
Mark or its infringement not only affects the Trade Mark itself but also the product or
good to which it is applied as well as the business and commercial goodwill of its
proprietor.
4. The protection of a Trade Marks, now a days has become an issue in India and the
USA through the Trade Mark Act, 1999 in India and the Lanham Act, 1946 in USA
have been enacted to provide protection to Trade Marks but the defenses under these
Acts and the conditions which are required to be fulfilled by a plaintiff under this
Acts to become successful in a proceeding of infringement of a trade Mark provide a
gateway to the infringers.

CHAPTERIZATION

Based on the theme of research work, this research work has been divided into the
following five chapters.

Chapter-1 “Introduction”
 This chapter gives an acquaintance with the present study within the framework of Law
and the Trade Marks. It describes the area of research and the reasons for conducting such
research work. It contains the research design, the hypothesis formulated for the purpose, the
methodology followed and aims and objectives pursued in this regard.

Chapter-2 Gradual development of Trade Mark Laws

This chapter extensively deals with the origin of Trade Mark in human civilization with
special reference to India during ancient period and in England during Medieval Period. It also
deals with the development of Trade Marks in UK and the USA.

Chapter -3: The main Provisions of infringement of Trade Marks Act, 1999: An Analysis

In this chapter the researcher deals with the main provisions of Infringement of Indian
Trade Mark Act, 1999 with the reference of Section 29 of the Act as well as Section 28 relating
to passing off.

Chapter-4: Comparative analysis of Trade Mark Law: India and Other countries.

In this chapter, the researcher has tried to discuss the comparison of India with other
countries and analyze the provisions that which law is more effective and reasonable to protect
the Trade Mark Proprietor.

Chapter-5: Judicial approach on Trade Mark Laws

In this chapter, the researcher has tried to highlight the judicial decisions held in India
and other countries and try to compare both and also highlighted the decision in which punitive
damages are given.

Chapter-6: Conclusion and suggestions

This is the final chapter, which recapitulates the entire research study followed by humble
suggestions how effective statutory provisions, relating to the protection of Trade Marks and the
seriousness on the part of judiciary in respect of the protection of Trade Marks can be achieved
and how a favorable environment for the protection of Trade Marks in India, USA and other
countries.
 ABBREVIATION

1- AC Appeal Cases (U.K.)

2- AIR All India Reporter
3- Cr.L.R. Criminal Law Reporter
4- ccTLD Country Code Top Level Domains
5- EC European Commission
6- ER English Reporters (U.K.)
7- FR Federal Reporters (USA)
8- GATS General Agreement to Trade in Services
9- GATT General Agreement to Tariff and Trade
10- HLJ House of Lords Journal
11- HTML Hypertext Markup Language
12- Http Hypertext Transfer Protocol
13- IPR’S Intellectual Property Rights
14- IPAB Intellectual Property Appellate Board
15- ICANN Internet Corporation for Assigned Names and Numbers
16- ILR Indian law Reporters
17- IP Intellectual Property
18- IP Adress Internet Protocol Address
19- IT Act Information Technology Act, 2000
20- INDRP In Dispute Resolution Policy
21- IT Act Information Technology Act, 2000
22- LQR Law Quarterly Review
23- LR Law Reporters
24- NSP Network Service Provider
25- OSI Open Source Initiative
26- PC Privy Council
27- P2P Peer to Peer
28- SCC Supreme Court Cases
29- SCJ Supreme Court Journals
30- SM Service Mark
31- TM Trade Mark
32- TM Act Trade Mark Act, 1999
33- TRIM TRADE RELATED INVESTMENT MEASURE
34- TLD Top Level Domain
35- TRIPS Agreement of Trade Related Aspects of Intellectual Property
Rights
36- UDRP Uniform Dispute Resolution Policy
37- UDNRP Uniform Domain Name Dispute Resolution Policy
38- UNICITRAL United Nations Commission on International Trade Law
39- URL Uniform Resource Locator
40- WTO World Trade Organisation
41- WIPO World Intellectual Property Organisation.