Trademarks play a crucial role in protecting brand identity, distinguishing goods and services, and fostering fair competition. In India, the Trademark Act, 1999 serves as the cornerstone of trademark law providing a comprehensive framework for trademark registration, enforcement, and protection. This research paper critically analyzes the Act, highlighting its strengths, weaknesses, and areas of improvement. It also examines key judicial precedents, international influences, and comparative legal perspectives to assess its effectiveness in today's digital age.

Introduction:
Recently on 19th of March, 2025 Delhi High Court permanently restrained infringement of Himalayas Liv.52' trademark and imposes ₹30.91 lakh in cost and damage. There are many such instances where such kind of infringement takes place and this is known as infringement of Trademark. Trademark is the most commonly used intellectual property rights. It's importance at global level was recognized through Madrid agreement way back in 1891. With change of time and through Madrid to TRIPS the international legal system in field of trademark has developed significantly.

The Trademark Act, 1999, was enacted to bring India's trademark law in line with international standards, particularly the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement under the World Trade Organization (WTO).  The Act replaced the Trade and Merchandise Marks Act, 1958, and introduced significant changes, such as protection for well-known trademarks, recognition of service marks, and enhanced penalties for infringement.

Research Methodology
This research adopts a systematic approach to gather, analyze, and interpret secondary sources to address the focused research topic. The methodology encompasses the following steps: Utilizing academic databases, scholarly journals, books, government reports, and reputable websites to identify pertinent secondary sources. Synthesizing the findings from different secondary sources to develop a comprehensive understanding of the research topic. Ensuring proper citation and acknowledgment of all secondary sources used in the research.

Adhering  to ethical guidelines and academic integrity standards in the selection, analysis, and presentation of secondary sources. This research methodology ensures a rigorous and systematic approach to utilizing secondary sources for addressing the research question while maintaining ethical standards and critical rigor within the constraints of secondary data analysis.
This paper critically examines the Act by discussing:

• It's Evolution.
• Its key provisions and their effectiveness along with judicial decisions.
• Loopholes and challenges in enforcement.
• A comparative analysis with international trademark laws.

Evolution of Trademark laws in India

In early times when there was no separate legal statute for recognition of trademarks, they were known as common law marks and couldn't be officially registered. Victims had to seek the common law remedy of passing off against infringement of their marks. The first statutory protection prior to India's independence was given through the Trademark Act, 1940, based on the Trademark Act, 1938 of England. Just after independence, to comply with emerging requirements and to give effect to the suggestions by Mr. Justice A. N. Rajgopala Aiyangar, the Trade and Merchandise Marks Act was passed in 1958. Due to globalization and the evolving field of trade and commerce, the Trademark Act, 1999 was enacted and came into force on 15th September, 2003. This Act replaced the Trade and Merchandise Marks Act, 1958. Prior to these enactments, some international legal frameworks dealt with the same subject matter, such as the TRIPS Agreement and the Paris Convention. Article 15 of the TRIPS Agreement defines a trademark as:

"Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark."

Overview of Trademark Act, 1999

Definition and Importance of Trademarks

A trademark is a sign, symbol, word, phrase, or logo that distinguishes the goods or services of one entity from another. It serves as an indicator of origin and ensures brand recognition. Section 2(zb) of the Trademark Act, 1999 defines a trademark as:

"Trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colour."

Section 2(m) defines a "mark" as a device, heading, label, ticket, signature, word, letter, numeral, shape of goods, packaging, combination of colours, or any combination thereof. Thus, the definition is inclusive and not exhaustive—anything not unlawful or barred from registration and having a distinct feature can be registered as a trademark. In Imperial Tobacco v. Registrar, Trademark, the term "distinctiveness" was explained as a quality in a trademark that makes the goods diverse from others. Thus, distinctiveness is one of the main essentials for the registration of a trademark.

Objectives of the Act

1. To provide legal protection for the trademark holder.
2. To prevent unauthorized use of registered trademarks and protect the goodwill of the owner.
3. To ensure compliance with international agreements like TRIPS, WIPO, and the Paris Convention.
4. To simplify the registration process and enforcement of rights.
5. To promote awareness among consumers about products.

Characteristics of the Trademarks Act, 1999

1. Comprehensive Protection – Replaces the 1958 Act, covering logos, symbols, words, colors, sounds, and shapes for goods and services.
2. Exclusive Rights & Validity – Grants exclusive usage rights to owners; trademarks are valid for 10 years with indefinite renewals.
3. Infringement & Legal Remedies – Provides civil and criminal penalties for unauthorized use, including protection for well-known trademarks.
4. International Compliance – Aligns with the TRIPS Agreement and enables global trademark registration under the Madrid Protocol.
5. Opposition & Transferability – Allows third parties to oppose trademarks, enables assignments, licensing, and prevents deceptive similarities.

There are several kinds of trademarks are recognised through this act such as product mark, service mark, collective mark, certification mark, shape mark, etc. and for their protection effort were made through this act .Now, lets examine the complete key provisions of the Trademark Act,1999. Basically it consists of 13 chapters and 159 section. Section 1 of this act states that this act may be called as Trademark Act and shall apply to whole of India. Section 2 defines the key terms like "mark", "trademark" , "service mark", etc. Trademark may be registered or unregistered both can avail legal remedies in case of infringement. But, registration will help the real owner as a primary facie evidence for their intellectual property.

 Similarly, in case of non- registered trademarks the user has to establish the prior use and passing off. The entire registration process can be studied in two parts first one is condition and grounds for registration and the second one is registration process. Section 6 to 17 deals with the condition and grounds for registration. Under section 6 all trademarks, which are accepted for registration, are entered into register maintained by registrar .Section 103, deals with penalties for  the offence of applying false trademarks, where the maximum punishment is up to term extendable to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees.

Also, the Act has a provision for second-time offenders as well, with the statutory punishment being the maximum one given in the Section 103.[5]

Mannat Group Of Hotels Private limited & ANR. V. M/S Mannat Dhaba & ors[6] in this case the  Delhi High Court has permanently granted injunction on various restaurants (local dhabas) situated on the Delhi-Dehradun highway from using the registered trademarks of popular Murthal based eatery "MannatDhaba."

Using the name of any reputed agency and earning profit from their good will without their prior permission clearly indicate the malicious intent of the user. That's why Section 7and 8 classifies goods and confers the sole power to the registrar for granting registration. So that no one can get the unfair advantage of someone else good will.  Earlier, registrar is the key functionary under the act. He is appointed by central government and  is vested with the wide discretionary power with respect to registration. He is vested with power of civil court but now there is change in this concept we will see it in upcoming part.

Now,  coming to the absolute ground of refusal of any mark from registration. Section 9 deals with absolute grounds for refusal of registration which include any mark which is – devoid of any distinctive character, and is  of such a nature which renders the service or other characteristics of goods, customary in current language or in the bona-fide and establish practice of trade, of such nature to deceive public or cause confusion, likely to hurt religious sentiments, scandalous or obscene matters, and whose use is prohibited under the emblem and names( prevention of improper use act , 1950).

Along with all these those marks shall not be registered as trademark if:

1. the shape of goods results from the nature of goods itself.
2. that shape is necessary as per technical requirements.
3. that shape gives significant worth to the goods.

In case of Parle Products (P) Ltd v/s. J. P. & Co.[7] the supreme court held that the similarity can't be a co- incidence parle product goodwill and reputation is infringed by the act of defendant .
Cardila Health care limited v/s.  Cadila pharmaceutical limited, 2001.[8]

The Supreme Court highlighted the importance of strict scrutiny of deceptive similarity in pharmaceutical trademarks due to the potential health hazards. And held that even minor confusion between drug names could result in serious medical errors.

Applying the dominant feature doctrine, the Court analyzed key elements of the disputed trademarks. Both "FAICITAB" and "FALCIGO" shared the prefix "FALCI-", derived from "Falciparum," the malaria-causing parasite. The Court identified this prefix as the most prominent aspect of both names, increasing the risk of confusion among medical professionals and patients.
Ultimately, the Court ruled in favor of Cadila Pharmaceuticals Ltd., concluding that the trademarks were deceptively similar due to their shared dominant feature. It also emphasized the need for higher standards in the pharmaceutical industry to prevent public health risks.

Apart from these absolute grounds there are certain relative grounds of refusal of registration which are covered under section 11. Which includes likelihood of similarities, earlier trademark may be well known and later can take unfair advantage of such mark, potentially causing confusion, copyright  etc. In case of  Nandhini Deluxe v/s.  Karnataka Co-operative Milk Producers (2018).[9]

The Supreme Court ruled that using a similar name for different classes of goods (restaurant vs. dairy products) does not automatically amount to infringement. This case clarified distinctiveness requirements under Section 11 of the Act.

However, if any person is not satisfied with the decision of registrar before 2021 he can only appeal to the Appellate board established under section 84 to 86 and through section 93 they get absolute power and curtail the jurisdiction of other courts stating that no court or authority shall have or be entitled to exercise any jurisdiction, power or authority in relation to the matters on which appeal can be filled before appellate board. But later on in 2021 this board was abolished by the Tribunal Reforms (Rationalization and Condition of service) Act,2021.[10]

Section 12 permits honest and concurrent use of trademark to more than one proprietors in certain cases. Section 13 imposes certain restrictions on the use of chemical elements or international non- proprietary names. Section 14 deals with use of names of recently dead persons. Section 15 and 16 deals with registration of part of trademark and associated trademark respectively. Finally, section 17 gives the effect of registration.
After discussing the grounds on which any trademark can be registered or refused from registration now, let's took a overview on the process of registration. Section 18 to 26 of the said act deals with the procedure for registration of any mark as trademark.

Now, let's determine who is eligible for trademark registration?
Section18 provides answer to this as- Any person claiming to be the proprietor of a trade mark used or purposed to be used by him, who is desirous of registering it, shall apply in writing to the registrar in the prescribed manner for the registration of his trade mark.[11] After receiving the application the registrar can accept or can reject the application, in case of rejection he needs to write the reason for that, also he can withdraw his acceptance prior to registration if he finds that application was erroneously accepted.

Then after the registrar needs to publish and advertise the application in the "trademark journal". And any person who wants to oppose that registration may within four months from the date of advertisement or re- advertisement give notice to the registrar in prescribed manner and on the payment of prescribed fee.

 If any opposition is raised then the registrar send the copy of such opposition to the applicant and he needs to reply the same within a period of two months, if he doesn't do so it shall be presumed that he has withdrawn his application. The counter statement shall also be send to the opposition. Then both the parties will be heard and all the relevant evidences taken by them shall be recorded in the register maintained by registrar.

After all these processes if there is any need for correction it will be done accordingly otherwise it will be approved. Finally under section 23 the registrar shall register the particular trademark within a period of 18 month from the date of filling the application. This is how the entire process of registration is regulated.

Each registration is valid for next 10 years after expiry of the same the applicant can renew it upon payment of prescribed fee.

In financial year 2024, total 280,000 trademark were got registered in India. The highest volume of filing came from applicants based in China with a combined domestic and abroad application class count of around 7.4 million; followed by US applicants (849,876), those based in the Russian Federation (543,692), and applicants from India (496,293) and Germany (441,293).[12]

In year 2023, total members of application were 466,580 in which 453,325 were Indian applicants and 466580 were foreigners.[13]In overall figure there is gap of 186,580 registration however, India is consistently raising the number from 453,325 to 496,293.

This number is constantly increasing because, after registration the Trademark holder gets the following rights such as- right to exclusive use, right to assign, right to seek legal remedies, right to seek correction of registered mark. In case of Cadbury India Limited v/s. Neeraj Food Products (2007) [14]:
The court held that Cadbury had the exclusive right to use the "Cadbury" mark for chocolates, preventing unauthorized use.

Similarly in case of Yahoo! Inc. v/s. Akash Arora (1999)[15]:
The court recognized Yahoo's right over its trademark and stopped the defendant from using a deceptively similar mark. This is how the right of trademarks holders are protected however, these rights are also limited with certain restrictions. Such as trademark registration can't override earlier registered trademarks of similar or identical marks. If someone was already using a mark before the trademark was registered, the owner of the registered trademark cannot interfere with that prior use.

The Supreme Court, in N.R. Dongre v/s. Whirlpool Corporation[16], ruled that a prior user of a similar mark can take legal action against a registered owner for passing off. If a trademarked word becomes a common name for a product, its legal protection ceases etc. are some grounds.

As a trademark holder register it's mark for his use or assign other that mark. The main reason behind enactment of this act and registration process arise when some unauthorized person uses that mark or deceptive similar mark and this is known as infringement. In such a situation the owner of unregistered trademark may suffer because, as we have already discussed that registration of trademark is not compulsory but mere suggestive then, here in case of infringement the registered one may take action but, that one who has not registered his trademark can only seek common law remedy of passing off under section 22(7).

Some common form of infringement are covered under section 29 of the Trademark Act, 1999. Section 30 deals with condition in which use of any mark would not amount to infringement. In Cardila Health Care Ltd v. Cardila Pharmaceutical Ltd., 2001[17] Supreme Court laid down certain criteria to determine trademark which are:

1. The nature of the marks.
2. The degree of resemblances between the mark.
3. The nature of goods.
4. Similarly in nature, character and performance.
5. The class of purchasers.
6. Other relevant circumstances.

Legal remedies for infringement and passing off a trademark
Legal remedies against trademark infringement can be categorized into civil remedies, criminal remedies, and administrative remedies. Before discussing these remedies let's take a overview on who can avail these remedies and who can file a suit ?  So, the suit can be filed by any registered proprietors, or his legal successors, suit can only be indicated after  the registration , foreign proprietors, and the user can also file the suit subject to prior notice to the registered proprietor.[18]

Under section 134 and 135 of the said act the victim can avail civil remedies in this he may be granted damages and injunction. As per Section 134 Suit for infringement, etc., to be instituted before District Court.
No suit:

• For the infringement of a registered trade mark; or
• Relating to any right in a registered trade mark; or
• For passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered,

Shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.^[19] Hence, no subordinate court from district court can have jurisdiction to hear these matters. This right is subjected to the limitation period of three years from the date of infringement. The burden of proof lies on the plaintiff. Section 135 of the Trademark Act, 1999 outlines the relief that a court may grant in cases of trademark infringement or passing off. The remedies include:

• Injunctions (restraining the infringer)
• Damages or an account of profits
• Delivery up of infringing labels and marks for destruction
• Interlocutory orders to support the plaintiff's case, including:
  • Discovery of documents
  • Preservation of infringing goods, documents, or evidence
  • Restraining the defendant from disposing of assets that could impact the plaintiff's ability to recover damages

These provisions ensure that trademark owners can effectively protect their rights and prevent further infringement. Criminal remedies are provided under section 102 and 103. Section 102 defines the nature of the offence, and section 103 covers the punishment and states that the punishment:

• Shall not be less than six months but which may extend to three years
• 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 judgment, impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand rupees.^[20] Under administrative remedies, the victim can get the remedies from the trademark authorities other than the court. The following options are available:

• Opposition proceedings under section 21
• Application for rectification and cancellation of trademark under sections 47, 57, and 58

This process is quite easy compared to lengthy court proceedings. These all processes clearly justify the maxim "Ubi jus ibi remedium" which means "where there is a right, there is a remedy." This is how the whole process of trademark law is regulated in India.

Comparative Analysis with International Trademark Laws:

Areas	India	USA
Registration process	Slow(12-18 months)	Faster(8- 12 months)
Well known marks	Recognized  under section 11	Requires extensive use.
Protection for unregistered mark.	Passing off (difficult to prove).	Strong common law.

Conclusion:
The Trademark Act, 1999, has significantly improved trademark protection in India by incorporating international best practices and providing stronger enforcement mechanisms. However, issues like delayed registration, bad-faith registrations, and weak enforcement of unregistered marks continue to pose challenges. And also, when there is need for reform the act has been amended a major change in this can be seen through Tribunal Reform Act of 2021 which abolished the appellate board due to administrative non functional and failure. Judicial interpretations have played a crucial role in shaping trademark law, but inconsistent decisions sometimes create uncertainty.

End Notes:

1. Law relating to intellectual property rights – Dr. M. K. Bhandari
2. https://www.wto.org/english/docs_e/legal_e/27-trips_04_e.htm
3. The Trademark Act, 1999.
4. AIIR, 1977 Cal.413
5. The Indian Trademark Act, 1999.
6. Mannat Group Of Hotels Private Limited & ... vs M/S Mannat Dhaba & Ors on 4 January, 2024
7. 1972 AIR 1359
8. AIR 2001 SUPREME COURT 1952.
9. AIR 2018 SUPREME COURT 3516.
10. The Tribunal Reforms Act, 2021.
11. The Indian Trademark Act, 1999.
12. https://www.wipo.int/web-publications/ip-facts-and-figures-2024/en/trademarks.html
13. https://ipindia.gov.in/writereaddata/Portal/IPOAnnualReport/1_114_1_ANNUAL_REPORT_202223_English.pdf
14. 142(2007)DLT724
15. 1999IIAD(DELHI)229
16. N.R. Dongre And Ors vs Whirlpool Corporation And Anr on 30 August, 1996.
17. AIR 2001 SUPREME COURT 1952
18. The Indian Trademark Act, 1999.
19. Section 134 of The Indian Trademark Act, 1999.
20. Section 103 in The Trade Marks Act, 1999.

Written By: Rashmi Kumari, 4th year student of Narayan school of law.