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PROJECT ON:

Well Known Trademark &Trans-boundary


Reputation.

SUBMITTED TO:
Mrs. Debmita Mondal
FACULTY, IPR Trademark (Hons).

SUBMITTED BY:
Sirshendu Mazumdar
Batch Id: 013/2013/0951
B.A.LL.B (Hons)

HIDAYATULLAH NATIONAL LAW UNIVERSITY,


RAIPUR, CHHATTISGARH.

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TABLE of CONTENTS

Topic Page No

1. Acknowledgements. 3.

2. Objectives 4.

3. Research Methodology 5.

4. Introduction 6.

5. Chapter 1-Historical evaluation of well known trademark 7.

6. Chapter 2- Judicial Trend in India 13.

7. Chapter 3- International Agreements on Well known Trademark 16.

8. Conclusion 18.

9. Bibliography and Webliography 19.

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Acknowledgements

It has been a wonderful experience working on the topic of “Well Known Trademark and
Trans Boudary Reputation” as was assigned by my faculty coordinator. This project has been
possible due to the combined efforts of many people.

Firstly, I would like to thank my faculty, Mrs. Debmita Mondal, who assigned me the topic. Her
valuable suggestions and guidelines helped me in doing extensive research about the topic.
Secondly, I would like to thank my family and friends whose constant support inspired and
motivated me to work hard and excel in the topic.

Lastly, I would take the opportunity to thank our Hon’ble Vice- Chancellor Sir for providing
extensive database in the library and also in the online department of our college.

Sirshendu Mazumdar

Batch Id: 013/2013/0951

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Research Objectives

 To study the historical evaluation of the theory of well known trademark.


 To analyze the judicial trend with respect to Trans boundary reputation of well known
trademark.
 To examine the international jurisprudence with respect to well known trademark.

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Research Methodology

The method of research adopted is analytical & descriptive in nature. Secondary sources of
information have been used to give the research work a concrete structure. Websites & e-articles
have been extensively referred for relying on the data. Other relevant sources as suggested by the
faculty coordinator have been referred to.

Footnotes have been provided wherever required.

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INTRODUCTION

The area of Intellectual Property Rights has seen vast advancement in terms of protection
accorded to them nationally and internationally. Global community as a whole has understood
the need to protect the intrinsic value of Intellectual Property and the efforts of the people behind
it. Trademark protection is one such form where marks are protected against dishonest use and
flagrant violation of the well known trademarks.

At the international level, TRIPS provide for the protection of trademark and at the domestic
level, India has enacted the Trademark Act of 1999 to regulate, govern and protect the use of
trademarks in public domain. The Trademark Act of 1958 was repealed as its ineffectiveness was
visible and the need was felt to enact a law which would be comprehensive and would address
the contemporary issues in the domain of trademark. One such issue was the need to protect well
known trademark across boundaries and prevent its violation.

Although, the right of passing off was recognized against the well known trademark, yet a
statutory recognition was a welcome step which in a way opened up business in India for various
corporations and well known business houses. Internationally, it has been a debatable topic as to
whether well known trademark is to be accorded protection and what should be the criteria for
determining a well known trademark. However, the law relating to well known is clear and this
project aims to explore the same.

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CHAPTER 1: HISTORICAL EVOLUTION OF WELL KNOWN TRADEMARK.

From ancient times human beings have been under the process of creating and innovating things.
During pre-historic period man had made stone, jewellery, hunting materials, vessels etc. When
spirituality started to sprout up he made figurines of gods and goddesses. Originally, marks were
placed on objects to identify ownership and to deter thieves. By this way the ancient people tried
to control low quality goods, and as the maker of the product was identified automatically the
infringers were punished. The more a trademark came to be known the more it inspired
confidence in the goods and services to potential clients. When a mark was placed it meant that
any other third party other than the manufacturer did not have any right over it, in a large way it
helped deter people with vested interest. In the middle ages two basic kinds of marks could be
found:-1

 Merchants Mark
 Production Mark

The Merchants Mark indicated ownership whereas the Production mark indicated the Origin.
Production marks were used by guilds to guarantee quality and to control entry to particular
trade. People also started engraving their names in ships. This was the first widely recognized
method of using trademarks, where in case of ship wreckage, identification would be possible.
The other people who started using trademarks were people doing business or in guilds started
asserting it as a mark on their goods. This made the manufacturer responsible for the quality of
the goods that are being produced and to retain their customers. Nowadays it is up to a seller to
use or not use a mark.

Modern marks do not aim at identifying ownership as was the case with the proprietary marks of
the Middle Ages. Modern marks are an asset for the producer whereas in earlier times the trade
marks were a liability. Many of the laws fought to bring about a mode of standardization as well
as protect the consumers so that they do not get cheated with adulterated goods. A specific mode
of measurement was fixed.

Evolution of Trademark Law can be studied across various ages and times and with respect to
various countries. The same is categorized below:

1 http://www.iip.or.jp/translation/ono/ch2.pdf( as accessed on 9th October, 2014).

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 India:

The form of proprietary protection for marks in India dates back several millennia. India’s
statutory Trademarks Law dates back to 1860. Prior to 1940 there was no official trademark Law
in India. Numerous problems arouse on infringement, law of passing off etc and these were
solved by application of section 54 of the Specific Relief act 1877 and the registration was
obviously adjudicated by obtaining a declaration as to the ownership of a trademark under Indian
Registration Act 1908.2

To overcome the aforesaid difficulties the Indian Trademarks Act was passed in 1940. This
corresponded with the English Trademarks Act. After this there was an increasing need for more
protection of Trademarks as there was a major growth in Trade and Commerce. The replacement
to this act was the Trademark and Merchandise Act 1958.This Act was to provide for registration
and better protection of Trademarks and for prevention of the use of fraudulent marks on
merchandise. This Law also enables the registration of trademarks so that the proprietor of the
trademark gets legal right to the exclusive use of the trademark. The objective of this act was
easy registration and better protection of trademarks and to prevent fraud. 3

The repealing of the Trademarks and Merchandise Act gave rise to the Trademark Act 1999. This
was done by the Government of India so that the Indian Trademark Law is in compliance with
the TRIPS obligation on the recommendation of the World Trade Organization. The object of the
1999 Act is to confer the protection to the user of the trademark on his goods and prescribe
conditions on acquisition, and legal remedies for enforcement of trademark rights. It, for the first
time protected service marks and gave provision of registration for collective marks. It also
differentiated between well known trademarks and trademarks in general and also special
treatment and rights were envisaged for well known trademarks. 4

There are some points of changes that are present between the 1958 act and 1999 act. It can be
said that the 1999 act is a modification of the 1958 act and it has provided exhaustive definitions
of terms frequently used, enhanced punishment for offenders, increased the period of
registration, registration of non- traditional trademarks. The rules of this act are called as

2 http://www.altacit.com/pdf/evolutionoftrademarklawsin_india.pdf( as accessed on 9th October, 2014)


3 Dr V K Ahuja, Law Relating to Intellectual Property, 94 (2nd Ed, 2013).
4 Id.

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Trademark Rules 2002. Both the Act and its set of rules came to effect on September 15th 2003.
The trademark act 1999 and its trademark rules 2002 presently govern Indian Trademark Laws in
India. Laws of trademarks are based on distinctiveness and deceptive similarity. If distinct signs
are freely used the brand equity created by one person will be freely used by another. The value
of distinctive sign depends on sales volume and public association of sign with quality.

 France:

In France, the ‘Factory, Manufacture and Workplace Act’ of April 20, 1803, (Article 16) was
internationally noted for establishing a system which made it a crime to pass off another's seal as
one's own. Further, the Criminal Acts of 1810 (Article 142) and 1824 (Article 433) made it a
punishable crime to abuse the name of others or wrongly use the names of production areas.

Even this system was not nearly as advanced as the comprehensive trademark legal structure as
we see today. On June 23, 1857 France established the first comprehensive trademark system in
the world with the ‘Manufacture and Goods Mark Act’ a trademark deposit system that embodied
theories of both used based and examination based registration systems. Until the passage of that
Act, France had employed an exclusively use-based system. In fact, in France's old colonial
territories, the influence of this system continues. This law was partially amended in 1890 and in
1944, and was repealed in 1964. On December 31, 1964, a registration-based system was
established in which the commencement of trademark rights was conditioned on "deposit"
(filing) and a loss of rights occurred through failure to use the mark. The current law was
established in January, 1991 and included concepts such as the protection of well known
trademarks, three-dimensional marks, sound marks, and an application publication system,
following the lead of the European Community.5

 England

Under the English common law system, fraud and the improper use of marks known as passing
off" an action for which remedies were contemplated continue even today. A trademark equity

5http://www.worldtrademarkreview.com/account/register/?Reason=FREEVIEWEXPIRED&ReturnUrl=http%3a
%2f%2fwww.worldtrademarkreview.com%2fMagazine%2fIssue%2f11%2fCountry-correspondents%2fFrance-
Inlex-Conseil ( as accessed on 9th October, 2014).

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law was added eventually to supplement common law protection, but England did not establish a
comprehensive system for trademark protection until 1905, nearly 50 years after the
establishment behind France. Prior to the 1905 Act, ‘The Merchandise Marks Act,’ which
focused on provisions dealing with deceptive indications, was passed on August 7, 1862. The
‘Trade Mark Registration Act’ was also passed in 1875. The 1905 Act was amended in 1919 and
1937, until a new Act was passed in 1938.

This Act fundamentally changed the system in many ways, permitting registration based on
intent-to-use, creating an examination-based process, and creating an application publication
system. It equipped the English system with advances that surpassed the trademark law of France
at that time. Consequently, U.S. and Japanese trademark laws were greatly influenced by the
1938 Act.

England's 1938 Trademark Act contained novel concepts such as "associated trademarks," a
consent-to- use system, a defensive mark system, well known marks and non-claiming right
system. Further, unlike U.S. trademark law at that time, even without actual use, an applicant
who had a "bona fide intent to use" a mark could gain registration. On the other hand,
registrations under the British law, unlike registrations in Japan or Germany, would only provide
a presumption of trademark ownership, without establishing a "fixed right." In England, on
October 1, 1986, a service mark registration system was incorporated (The 1986 Act). By 1995,
England, the U.S., Germany, France and Japan, the so-called G5 ("Group of 5") were all utilizing
a service mark registration system. Almost all industrialized countries have a service mark
registration system today.6

England, following an EC directive, expanded the scope of its trademark subject matter,
amending its trademark requirements on October 10, 1994. In addition to this, the associated
trademarks system and the defensive mark system leftover from the 1938 Act were abolished.
The Japanese associated trademarks system and defensive mark system were largely constructed
out of the influence of English law, but, although the associated trademarks system was
abolished under the 1996 amendments, the defensive mark system remains.

 Germany
6 http://www.worldipreview.com/article/reputation-and-proof-protecting-a-well-known-trademark( as accessed on
9th October, 2014).

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The Trademark Protection Law, enacted on November 30, 1874 is considered to be the first
German trademark law. It put into place a non substantive trademark registration and
examination system. A later statute, the Trademark Protection Law of May 12, 1894, followed
principles of an examination-based system that was substantively based. Germany's 1936
amendment put the law in the form of the modern trademark law. A trademark however could be
registered only when there was no objection raised by a prior registrant upon receipt of a notice
about the application from the Patent Office. In 1967, the law underwent a major amendment
that introduced a use based examination system. Registered trademarks that had not been in use
for more than five years were canceled. Service marks were included by amendment in 1979.
The German unification on October 3, 1990 triggered the Industrial Property Right Expansion
Law that was enacted on May 1, 1992.7

The Trademark Law enacted on January 1, 1995 was a major amendment to the law, increasing
the number of articles to 164. The present German trademark law solidified certain concepts,
such as permitting the assignment of trademarks, the expansion of the subject matter available
for trademark registration and a post-registration opposition system and protection to well known
trademarks.. After 1995, Germany adopted a system that allowed oppositions to be made
subsequent to trademark registration, contrary to the trademark system in Japan.

Additionally, German trademark law has a regulation to provide protection for well known
shapes and indications that is equivalent to protection provided under Japanese Unfair
Competition Prevention Law.

 United States

American trademark law was initially influenced strongly by English trademark law. In the U.S.,
various avenues are available for seeking a remedy. The state courts will adjudicate based on
state registration or common law right; the federal courts will adjudicate based on federal

7 http://www.worldtrademarkreview.com/Magazine/Issue/35/Country-correspondents/Germany-Siebeke-Lange-
Wilbert( as accessed on 9th October, 2014).

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registration. The trademarks in the U.S. that are owned by Japanese companies are primarily
federally registered trademarks.

On July 8, 1870, the Federal Trade Mark Act was enacted as the first U.S. federal law to protect
trademarks. In 1879, however, the U.S. Supreme Court held the law was unconstitutional due to
a conflict with the provision on patents in the U.S. Constitution. It was therefore abolished. In its
place, a trademark law was enacted on March 3, 1881 that targeted trademarks used in interstate
commerce (and in the commerce with Indian tribes) based on the interstate commerce clause in
the U.S. Constitution (art. 1, sec. 8, cl. 3). This law, however, was unable to accommodate the
development of the American economy and underwent a major amendment in 1905. It underwent
further partial revisions occasionally during subsequent years.8

Upon the enactment of the Lanham Act on July 5, 1946, American trademark law came to rank
equally with English or German trademark laws. The Lanham Act is similar to English trademark
law because it adopted use based principles as its foundation. The Act, however, put much more
emphasis on use than the English law did initially, requiring not merely an intention to use the
mark, but an actual use of the mark in order for the mark to be registered. This emphasis,
however, was later altered in response to changes made internationally. In response to
international pressure, the House of Representatives passed an amendment to the Act on October
19, 1988, and the Senate approved it the following day. It was signed into law on November 16,
1988. The amended Act still requires use of a mark; however, an intent to use is now sufficient to
apply for trademark registration. The American trademark law also differs from English
trademark law by protecting marks under state trademark law in addition to the federal trademark
law.

Thus, this is how law relating to well known trademark has evolved across international
jurisprudence.

CHAPTER 2: JUDICIAL TREND WITH RESPECT TO WELL KNOWN TRADEMARK IN

INDIA.

Well known Trademark in India has been accorded protection from a very long time. The
common law remedy of passing off was always available against well known trademark.

8 http://www.uspto.gov/ip/global/trademarks/ir_tm_marks.jsp( as accessed on 9th October, 2014).

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However, the Trademark Act of 1999 gave a statutory recognition to the well known trademark
and prohibits users from infringing the trademark.

The remedy of passing off has been granted in various cases even before the enactment of the
Trademark Act. In Daimer Benz v Haibo Hindusthan 9, the manufactures of Mercedes Benz
sought an injunction against the defendants who were using the famous three pointed star in the
circle and the word Benz. The Court granted injunction against the defendants who were using
the same. The decision of the Delhi High Court in Whirpool Co & Anr v N.R.Dongre & Ors 10 is a
landmark judgment which enunciated the remedy of passing off in cases of infringement of well
known trademark. The plaintiff had a worldwide reputation of selling washing machines and
advertised the same across various countries. The defendant started selling the same with the
mark of Whirpool in it. The Court held that the plaintiff had established a ‘trans border
reputation’ in India and hence the defendants were injuncted from using the same. The
Trademark Act of 1999 under Section 2(1)(zg) defined well known trademark and Section 11
laid down criteria for identifying as to what constitutes well known trademark.

 Firstly, knowledge and recognition of the alleged well known mark in the relevant section
of the public has to be judged. A peculiar case on this point is the Hari Puttar Case 11
where there was a trademark dispute between the movie named ‘Hari Puttar’ and the
well known novel series ‘Harry Potter’. The Court in this case held that “what is to be
borne in mind is that the Harry Potter films are targeted to meet the entertainment needs
of an elite and exclusive audience- an audience able to discern the difference between a
film based on Harry Potter book and a Punjabi movie based on the other. In other words,
one can easily distinguish between the two and shall not be misled.” The Delhi High
Court recently in the case of Rolex SA v Alex Jewellery12 granted an injunction in favor of
the plaintiff and observed that the “ Rolex is a well known trademark and the segment of
the public which uses the same can be confused with the artificial jewellery of the
defendant as being the products of the plaintiff. Hence an injunction against the same has
to be granted.”

9 AIR 1994 Del 239.


10 (1996) PTC 415 (Del).
11 Warner Bros Entertainment Inc v Harvinder Kohli & Ors, 2008 (38 )PTC 185 (Del).
12 (2009) 41 PTC 284 (Del).

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 Secondly, the duration and extent of the geographical area it covers has to be judged. The
condition differs from case to case and Courts have generally been lenient. In the case of
Indian Shaving Products v Gift Pack13, the Court held that high sales with proper
advertisement even if is for a less than one year can be said to satisfy this condition.
 Thirdly, duration and extent of a well known trademark in terms of its promotion is also
taken into consideration. In fact, promotion in the form of advertising is an important
consideration for determining the nature of a well known trademark. In Marico Ltd v
Madhu Gupta14, the court took cognizance of the fact huge amount was spent on
advertising and hence the same was held as a well known trademark.
 The record of successful enforcement of the rights in that well known trademark is
another consideration. For instance, the famous alcohol manufacturing company, Shaw
Wallace, enforced the rights in its brand name in numerous cases and hence it was
considered as a well known trademark.
 The number of actual and potential customers is also an important point. In the recent
case of Aveda Corporation v Dabur India Ltd,15 the plaintiffs were involved in the
business of selling beauty products in the name of AVEDA and the defendants started
selling their products in the name of UVEDA. The Delhi High Court held that there
would be no confusion on the part of the public because the plaintiffs had a small
customer base and a miniscule base in India.

These factors have to be considered in a wholesome manner and it differs from case to case. The
Supreme Court in the case of Mahendra Paper Mills Ltd v Mahindra & Mahindra Ltd 16 held that
“whether there is a likelihood of deception or confusion is a matter which is to be decided by the
court and no witness is entitled to say whether a mark is likely to deceive or to cause confusion.
Broadly speaking, factors creating confusion would be nature of the market itself, class of
customers, trade channels and the course of trade. All these factors are to be holistically
determined in order decipher the true nature of the well known trademark.”

The Supreme Court has in cases given liberal interpretation in deciding the nature of a well
known trademark. For granting a remedy of passing off, even the absence in the Indian market

13 (1998) PTC Del (698).


14 IA Number 15565 of Delhi High Court.
15 IA Number 14808 of 2009.
16 (2001) Supp 5 SCR 225.

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has been held to be no bar in deciding the nature of the trademark. The Supreme Court in the
case of Milmet Oftho Industries & Ors v Allergen Inc 17 settled the law with respect to Trans
border reputation. The Court held that the “mere fact that the Respondents were not using the
mark in India would be irrelevant if they were first in the world market.”

The recent Supreme Court decision in the Blenders Pride case is a step in the same direction. The
Court held that “the plaintiffs having come out the Blenders Pride whisky first in the
international market were first past the post; even though the Defendants were the first to do so
in India. The fact that the product of the plaintiffs was not manufactured or sold in India from
1973 till 1995 when it became freely available is of no consequence.”18

However, courts in India has settled the stand with respect to well known trademark and held in
various cases that well known trademarks having Trans boundary reputation has to be protected
either by way of passing off and now under Section 11 of the Trademark Act. 19 Thus, this is the
current law position with respect to the protection of well known trademark in India and its Trans
boundary reputation.

CHAPTER 3: WELL KNOWN TRADEMARK AND PROTECTION UNDER INTERNATIONAL

AGREEMENTS.

The concept of well known trademark is a historically evolved concept which has found its
acceptance and mention in various international agreements and covenants. Some international

17 (2004) 12 SCC 624.


18 Austin Nichols & Co and Seagram v Arvind Behl, Supreme Court.
19 Kabushiki Kaisha Toshiba v Toshiba Appliances, 1994 PTC 53, M/s J N Nicholas Ltd v Rose and Thistle, 1994
PTC 83.

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instruments have been designed to protect the Trans boundary reputation of well known
trademark and give it global recognition.

Paris Convention for the Protection of Industrial Property of 1883 was the first convention which
provided for protection of well known trademarks. Article 6 places its member states under an
obligation to reject or cancel the registration, or prohibit the use of trademarks which are
confusingly similar to a well known mark.20

The TRIPs Agreement is an improvement over the Paris Convention as it addresses the issue of
protection of well known mark in a more detailed way. Article 16 of the Agreement provides:21

 Well known trademarks are to be protected for products as well as services.


 Relevant sector of the public must be taken into consideration for determining well
known marks.

Article 2 of the TRIPs Agreement incorporates all the substantive provisions of the Paris
Convention and in way gives effect to the Paris Convention.22

Subsequently, Joint Recommendation of Concerning Protection of Well Known Trademark was


adopted by the Assembly of the Paris Union for Protection of Industrial Property which was a
comprehensive covenant on the protection of the well known trademark.23 The same was also
adopted by the General Assembly of the WIPO and made it universally acceptable. The covenant
contains articles which help to determine as to what constitutes well known marks and
subsequently gives guidelines to protect the same. The covenant has been universally accepted
by many nations and India in the year 1999, enacted the Trademark Law to harmonize its
domestic law with its international commitments. The Joint Recommendation lays down more
comprehensive criteria for determining the domain of well known trademark:

 The degree of knowledge and recognition.


 The duration and extent of geographical use.
 The duration and extent of promotion of the trademark.
 The value associated with the mark.

20 http://www.wipo.int/treaties/en/text.jsp?file_id=288514 (as accessed on 10th October, 2014)


21 http://ip-science.thomsonreuters.com/m/pdfs/klnl/8418407/wellknownmarks.pdf( as accessed on 10th October,
2014).
22 http://www.wto.org/english/tratop_e/trips_e/intel2_e.htm ( as accessed on 10th October, 2014).
23 http://www.wipo.int/edocs/pubdocs/en/marks/833/pub833.pdf (as accessed on 10th October, 2014).

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 The record of successful enforcement of the trademark.

The domestic law of India has been modeled on these lines and gives effect to the international
protocols and conventions. Thus, the recognition of well known trademark and its protection
across boundaries is a universally accepted principle both common law as well as statutory
remedies exist for its infringement.

CONCLUSION

The Trans Boundary Reputation of well known trademarks is by now an accepted principle
which has been given statutory recognition in many countries. The idea and intent behind such a
protection is to help and promote and protect the brand value of mark which has struck a chord
with substantial segment of the public.

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One debate which has arisen in recent times is that under the garb of protecting well known
trademarks, many a times an honest concurrent user is refused registration and thus it results in
stifling of intellectual growth. This is something which the world community has to address at
large. Although there are criteria for determining the well known trademark, yet at times
concurrent user has to face the brunt of refusal.

Section 12 of the Trademark Act is a welcome step in this regard, yet a lot needs to be done to
make its implementation more comprehensive. As far as the Trans boundary reputation is
concerned, protection of well known trademark is twofold. Firstly, it protects the rights of the
registered user and secondly, it promotes investment in various countries. Thus, protection of
well known trademark now is a need rather than an obligation upon the countries.

BIBLIOGRAPHY & WEBLIOGRAPHY

Books Referred:

 DR V K AHUJA, LAW RELATING TO INTELLETUAL PROPERTY RIGHTS ( LEXIS


NEXIS 2013) (2011).

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Websites Referred:

 www.uspto.gov.in
 www.wipo.org
 www.worldtrademarkreview.com
 www.wto.org
 www.unitedipr.com

Articles Referred

 History and Development of Trademark Law, (http://www.iip.or.jp/translation/ono/ch2.pdf)


 Evolution of Trademark Laws in India, (www.altacit.com/pdf/wvolutionoftrademarklaw)
 Protection of Well Known Trademarks (www.nopr.niscair.res.in)
 Upshot in Fame, Transborder Reputation in India (www.phoenixlgal.in)
 Transborder Reputation of Trademarks (www.lawyersclubindia.com)

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