Contents
Chapter-wise Marks Distribution
Previous Exams Trend Analysis
Chapter-wise Comparison with Study Material I-11
PART I
ECONOMIC & COMMERCIAL LAWS
Chapter
Chapter
LAW RELATING TO TRADEMARKS
TRADEMARK
Q1. What is ‘trademark’? Comment on the benefits of trademark to all stakeholders. [Dec. 2016 (5 Marks)]
Ans.: A trademark is a recognizable sign, design or expression which identifies products or services of a particular source from those of others.
A trademark may be located on a package, a label, a voucher or on the product itself. Trademark symbolizes the business reputation.
Trade mark is valuable property of any business. Some of the well known trademarks are Coca Cola, Pepsi, Tata etc.
A trademark is intangible property.
Common benefits of trademark:
u It identifies the goods/or services and its origin.
u It guarantees its unchanged quality.
u It advertises the goods/services.
u It creates an image for the goods/services.
Q2. What is meant by Trademark under the Intellectual Property Rights? [June 2024 (5 Marks)]
Ans.: A trademark is a recognizable sign, design or expression which identifies products or services of a particular source from those of others.
A trademark may be located on a package, a label, a voucher or on the product itself. Trademark symbolizes the business reputation.
Trade mark is valuable property of any business. Some of the well known trademarks are Coca Cola, Pepsi, Tata etc.
A trademark is intangible property.
Trademark [Section 2(zb)]: Trade mark 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 colours.
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Q3. Pankaj, Director of M/s Mustered Oil Manufacturing Company, seeks your advice for the selection of a trademark which he proposes to be used for its products. Describe various natures of trademarks and which trademarks are considered as strong in nature. [Dec. 2018 (5 Marks)] Or
Govind, has newly started a ready to eat food products manufacturing company. He seeks your advice for the selection of a trademark for his products. Brief him with example on the following categories of trademarks referring to the provisions of the Trade Mark Act, 1999:
1. Generic marks
2. Descriptive marks
3. Suggestive marks
4. Arbitrary marks
5. Invented/Coined marks
Also suggest him which Category or Categories are strong and which are weak with respect to protection of Trademark rights. [June 2019 (5 Marks)]
Ans.: Following are the pre-requisites for registration of a trademark to be registered
u The selected mark should be capable of being represented graphically (that is in the paper form).
u It should be capable of distinguishing the goods or services of one undertaking from those of others.
u It should be used or proposed to be used mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have the right to use the mark with or without identity of that person.
Any startup needs to be cautious in selecting its trade name, brands, logos, packaging for products, domain names and any other mark which it proposes to use. You must do a proper due diligence before adopting a trademark. The trademarks can be broadly classified into following five categories:
(1) Generic Trademark: Generic mark means using the name of the product for the product, like “Salt” for salt.
(2) Descriptive Trademark: Descriptive marks mean the mark describing the characteristic of the products, like using the mark “Fair” for the fairness creams.
(3) Suggestive Trademarks: Suggestive marks mean the mark suggesting the characteristic of the products, like “Habitat” for home furnishings products.
(4) Arbitrary Trademarks: Arbitrary marks means mark which exist in popular vocabulary, but have no logical relationship to the goods or services for which they are used, like “Blackberry” for phones.
(5) Invented/coined Trademarks: The invented/coined marks means coining a new word which has no dictionary meaning, like “Adidas”.
The strongest marks are easiest to protect are invented or arbitrary marks. The weaker marks are descriptive or suggestive marks which are very hard to protect. The weakest marks are generic marks which can never function as trademarks.
India follows the NICE Classification of Goods & Services for the purpose of registration of trademarks. The NICE Classification groups products into 45 classes (classes 1-34 include goods and classes 35-45 include services). The NICE Classification is recognized in majority of the countries and makes applying for trademarks internationally a streamlined process. Every startup, seeking to trademark a goods or services, has to choose from the appropriate classes, out of the 45 classes.
While adopting any mark, the startup should also keep in mind and ensure that the mark is not being used by any other person in India or abroad, especially if the mark is well-known.
Q4. Write a short note on: Enforcement of Trademark Rights [June 2019 (3 Marks)]
Ans.: Trademarks can be protected under the Trade Mark Act, 1999 and the common law i.e. under the remedy of passing off. If a person is using a similar mark for similar or related goods or services or is using a well-known mark, the other person can file a suit for violation of his intellectual property i.e. trademark rights irrespective of the fact that the trademark is registered or not.
Registration of a trademark is not a pre-requisite in order to sustain a civil or criminal action against violation of trademarks in India. The prior adoption and use of the trademark is of utmost importance under trademark laws.
The relief which a Court may usually grant in a suit for infringement or passing off includes permanent and interim injunction, damages or account of profits, delivery of the infringing goods for destruction and cost of the legal proceedings. It is pertinent to note that infringement of a trademark is also a cognizable offence and criminal proceedings can also be initiated against the infringers.
DEFINITIONS
Q5. Write a short note on: Well Known Trademark [Dec. 2008 (3 Marks)] Or
Define ‘Well Known Trademark’. [Dec. 2014 (5 Marks)]
Ans.: Mark which is similar to well known trademark cannot be registered as trademark under the Trade Mark Act, 1999.
Well Known Trademark [Section 2(1)(zg)]: A well known trademark in relation to any goods or services means a mark which has become so to the substantial segment of the public which uses such goods or services such that
PART II : INTELLECTUAL PROPERTY LAWS
the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.
Example: Mercedes Benz may not be known to many persons in India but still it is well known trademark.
Important points relating to well known trademark:
u The Registrar shall take into account factors laid down in Section 11(6) & (7) to determine whether trade Mark is well-known trademark or not.
u Where a trademark is well known in one part of India it is still regarded as well known trademark under the Act.
u The well-known trademark need not be used in India, need not be registered in India, even application for registration need not have been filed in India.
u Even if trademark has been registered outside India it can still be considered as well known trademark.
Q6. ‘EcoSustain World’ is a multinational corporation with a registered well-known Trade Mark protected across different categories of goods and services and a strong global brand reputation. A new Indian company started using a deceptively similar Trade Mark. Can ‘EcoSustain World’ protect its trade mark in India?
(i) Explain with an example the significance of a well-known trade mark as per provisions of the Trade Marks Act, 1999.
(ii) Why Registrar will protect ‘EcoSustain World’?
[Dec. 2024 (2 + 3 = 5 Marks)]
Ans.:
‘EcoSustain World’ can protect its well-known Trademark in India.
Well Known Trademark [Section 2(1)(zg)]: A well known trademark in relation to any goods or services means a mark which has become so to the substantial segment of the public which uses such goods or services such that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.
Example:
(1) Mercedes Benz may not be known to many persons in India but still it is well known trademark.
(2) Google has been registered as a well-known trademark of Alphabet Inc., which thereby means only Alphabet Inc. can register the term ‘Google’ for any category of goods and services. Even if the service is not related
to the Internet industry, no other company but Alphabet Inc. can register ‘Google’ as its trademark.
Significance of a well-known trade mark: The well-known trademark need not be used in India, need not be registered in India, even application for registration need not have been filed in India.
Even if trademark has been registered outside India it can still be considered as well known trademark.
Why Registrar will protect a well-known trade mark: A well-known trade mark has been vouchsafed with extraordinary protection and safeguards against passing off and infringement of such trademarks. Well-known trademarks are recognized in India on the basis of their reputation, nationally, internationally and the cross-borders. Unlike other trademarks whose goodwill and reputation is limited to a certain specified geographical area and to a certain range of products, well-known trademarks have its goodwill and reputation protected across the nation and across categories of goods and services. It is law that restricts the Trade Mark Registry to allow and register any mark as a trademark which is deceptively similar to any of the well-known trademark.
REGISTER OF TRADEMARK & CONDITIONS FOR REGISTRATION
Q7. Write a short note on: Inherently distinctive marks [June 2013 (3 Marks)] Or
What amounts to an ‘inherently deceptive mark’ under the Trade Marks Act, 1999? [June 2015 (3 Marks)]
Ans.: The Supreme Court in Uniply Industries Ltd. v. Unicorn Plywood Pvt. Ltd. & Others observed that:
(i) For inherently distinctive marks ownership is governed by priority of use for such marks. The first user of sale of goods/services is the owner who is senior to others.
(ii) These marks are given legal protection against infringement immediately upon adoption and use in trade.
(iii) Some courts indicate that even prior sales of goods – though small in size with the mark – are sufficient to establish priority, the test being to determine continuous prior user and the volume of sale or the degree of familiarity of the public with the mark.
Therefore, the proprietorship of the trademark is decided by the date of usage of the mark by a person in business transactions.
Q8. State the grounds under which registration of trademark can be refused. [June 2006 (5 Marks)]
PART II : INTELLECTUAL PROPERTY LAWS
Or
State the absolute grounds for refusal of registration of trademark. [Dec. 2013 (3 Marks)], [Dec. 2020 (5 Marks)], [Dec. 2021 (5 Marks)]
Ans.: Absolute grounds for refusal of registration [Section 9(1)]: Following trademarks cannot be registered:
(a) Which are devoid of any distinctive character i.e. not capable of distinguishing goods or services of one person from those of another person.
(
b) Which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service.
(
c) Which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade.
However, if a trade mark has acquired a distinctive character as a result of the use made of it or is a well-known trade mark, its registration shall not be refused. In short, a trademark which has been demonstrated to be distinctive in the market place shall be regarded as distinctive in law as well and be registrable.
Marks which cannot be registered as trademark [Section 9(2)]: Following marks cannot be registered as trademark –
(i) Which is likely to deceive or cause confusion.’
(ii) Which contains any matter likely to hurt the religious susceptibilities.
(iii) Which contains scandalous or obscene matter.
(iv) If its use is prohibited under the Emblems & Names (Prevention of Improper Use) Act, 1950.
Shape that cannot be registered as trademark [Section 9(3)]: Following marks cannot be registered as trademark -
(1) Shape of goods which results from the nature of the goods themselves.
(2) Shape of goods which is necessary to obtain a technical result.
(3) Shape which gives substantial value to the goods.
Relative grounds for refusal of registration:
(1) Likely to cause confusion in case of similar goods [Section 11(1)]: Trademark shall not be registered if there is likelihood of confusion on the part of public because of –
(a) Its identity with an earlier trade mark and similarity of goods or services covered by the others trademark.
(b) Its similarity to an earlier trademark and the identity or similarity of the goods or services covered by the others trademark.
(2) Dissimilar goods but trademark already registered [Section 11(2)]: In case of dissimilar goods, a identical or similar trademark will not be registered if earlier trademark is a well known trademark in India and use of mark proposed to be registered would be unfair or detrimental to proprietor of the well known trademark.
(3) No registration due to law of passing off or copyright [Section 11(3)]: A trademark shall not be registered if its use in India is prevented by the law of passing off protection or by law of copyright.
(4) When trademark can be registered even if similar or identical [Section 11(4)]: A trademark can be registered if proprietor of earlier trademark gives consent to registration of new mark.
(5) No refusal unless opposed [Section 11(5)]: Registration of any trademark shall not be refused unless registration is opposed by proprietor of earlier trademark.
(6) Section 11(6) lays down the factors that are to be considered by the Registrar to determine whether ‘a trademark is a well-known trademark or not’.
(7) Section 11(7) lays down the factors that are to be considered by the Registrar to determine whether ‘a trademark is known or recognized in a relevant section of the public’.
Q9. Priya wants to start the trading of incense sticks (agarbattis, dhoops) and perfumeries as M/s Priya Perfumery. She made an application to the Registrar of Trade Marks to register a trade mark by name ‘RAMAYAN’. State with reasons whether she will succeed in registering such a Trade Mark under the Trade Marks Act, 1999? [June 2024 (5 Marks)]
Ans.: As per Section 9(1) of the Trade Marks Act, 1999, trademarks cannot be registered which are devoid of any distinctive character i e not capable of distinguishing goods or services of one person from those of another person
As per Section 9(2), marks cannot be registered as trademark which contains any matter likely to hurt the religious susceptibilities.
In the case of Amritpal Singh v. Lal Babu Priyadarshi, Intellectual Property Appellate Board (IPAB) the word RAMAYAN was refused registration on the grounds that - Firstly, it was not capable of distinguishing the goods of the applicant and Secondly, that it was likely to hurt religious sentiments of a class of society
Thus, Priya will not succeed in registering such a trademark RAMAYAN under the Trade Marks Act, 1999.
Q10. What are the absolute grounds for refusal of Registration of trade mark under section 9(1) of the Trade Marks Act, 1999? [June 2024 (5 Marks)]
PART II : INTELLECTUAL PROPERTY LAWS
Ans.: Absolute grounds for refusal of registration [Section 9(1)]: Following trademarks cannot be registered:
(
a) Which are devoid of any distinctive character i.e. not capable of distinguishing goods or services of one person from those of another person.
(
b) Which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service.
(
c) Which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade.
However, if a trademark has acquired a distinctive character as a result of the use made of it or is a well-known trade mark, its registration shall not be refused. In short, a trademark which has been demonstrated to be distinctive in the market place shall be regarded as distinctive in law as well and be registrable.
PROCEDURE & DURATION OF REGISTRATION
Q11. State the provisions of Trademark Act, 1999 relating to ‘procedure for registration of trademark’.
Ans.: Application for registration [Section 18]:
(1) Any person claiming to be the proprietor of a trademark used or proposed to be used can apply to the Registrar in prescribed manner for the registration of his trademark.
(2) A single application may be made for registration of a trademark for different classes of goods and services but separate fees are payable for each class.
(3) Application shall be filed in the office of the Trademark Registry under whose territorial jurisdiction the principal place of business of proprietor is situated.
(4) The Registrar may refuse or accept application subject to such amendments, modifications, conditions or limitations, as he may think fit.
(5) In the case of a refusal or conditional acceptance, the Registrar shall record in writing the grounds for such refusal or conditional acceptance.
Registration [Section 23]:
(a) After deciding on opposition and hearing parties, Registrar can register trademark within 18 months of the filing of the application. Date of application shall be deemed to be date of registration.
(b) On the registration of a trade mark, the Registrar shall issue a certificate in the prescribed form sealed with the seal of the Trademarks Registry.
(
(
c) If registration is not completed in 12 months due to fault of applicant, Registrar can treat the application as abandoned.
d) Register of trademark can be amended by the Registrar for clerical error or on obvious mistake.
Q12. For what period registration of trademark is valid? Also state the provisions relating to renewal and restoration of registered trademark.
Ans.: Duration, renewal, removal and restoration and registration [Section 25]:
(1) The registration of trademark shall be valid for 10 years. It can be renewed from time to time.
(2) On application by the registered proprietor of a trademark in prescribed manner and within the prescribed period, the Registrar shall renew the registration of the trademark for a period of 10 years from the date of expiration of the original registration or of the last renewal of registration, as the case may be.
(3) Before the expiration of last registration, the Registrar will send a notice in the prescribed manner to notify proprietor of a registered trademark for the renewal of registration and fee to be paid for renewal. If fees are not paid or prescribed conditions are not fulfilled, the trademark will be removed from register. However, trademark will not removed if fees plus surcharge is paid within 6 months from the date of expiration of registration.
(4) If a trademark has been removed from the register for non-payment of fees, the Registrar can restore the trademark on receipt of an application in the prescribed form and on payment of the prescribed fee for a period of 10 years from the expiration of the last registration subject to such conditions or limitations as he thinks fit.
(5) Such restoration can be made if proprietor of a registered trademark applies after six months and within one year from the expiration of the last registration of the trademark.
EFFECT OF REGISTRATION
Q13. Mention the provisions of the Trade Marks Act, 1999 regarding infringement of registered trademarks. [Dec. 2006 (5 Marks)] Or
Explain the provisions of Trade Mark Act, 1999 regarding infringement of registered trademarks. [Dec. 2008 (5 Marks)] Or
What are the circumstances under which a registered trademark is deemed to be infringed under the Trade Marks Act, 1999? [June 2009 (5 Marks)]
PART II : INTELLECTUAL PROPERTY LAWS
Ans.: Infringement of registered trademarks [Section 29]: A registered trademark is ‘infringed’ when a person other than registered proprietor or a person using by way of permitted use, uses in course of trade.
Following constitutes infringement of registered trademark:
(1) Use of a mark which is identical with or deceptively similar to other registered trademark.
(2) Use of a mark which likely to cause confusion because of identity or similarity with other registered trademark.
(3) Use of identical or similar registered trademark on goods which are not similar.
(4) Use of registered trademark as trade name or name of business.
(5) Unauthorized use of trademark for labelling or packing of goods or advertising goods or services.
(6) Using a mark in advertisement to take unfair advantage or which is detrimental to its distinctive character or is against the reputation of trademark.
Q14.
Distinguish between: Infringement of trademark and Passing off [June 2012 (5 Marks)]
Ans.: Following are the main points of difference between infringement of trademark and passing off:
Points Infringement of trademark Passing off
Meaning
Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees.
Action Infringement action can be only in respect of registered trademark.
What to establish
Definition of ‘infringement’ is very wide. ‘Similarity’ and ‘likely to confuse’ is sufficient to establish infringement of trademark.
Base for action For infringement action one has to prove violation of his statutory right.
Passing off is a common law tort, which can be used to enforce unregistered trademark rights. The law of passing off prevents a person from misrepresenting his goods or services as that of another.
Passing off action can be taken in respect of registered trademark or unregistered trademark.
While for ‘passing off’ the mark should be ‘deceptively similar’.
For passing off action one has to show misrepresentation, deceit or bad faith.
Economic Commercial & Intellectual Property Laws (ECIPL
CRACKER
AUTHOR : N.S. ZAD
PUBLISHER : TAXMANN
DATE OF PUBLICATION : JUNE 2025
EDITION : 5TH EDITION
ISBN NO : 9789371261456
NO. OF PAGES : 392
BINDING TYPE : PAPERBACK
| EC & IPL) |
DESCRIPTION
Economic, Commercial & Intellectual Property Laws | CRACKER for CS-Executive (New Syllabus)
– Group 2 | Paper 6 is an exam-oriented practice companion that helps students sharpen their conceptual understanding and legal application skills. Aligned with the latest ICSI examination pattern, it includes solved questions from previous exams (up to June 2025), trend analysis, and chapter-wise weightage to help students achieve high scores.
The Present Publication is the 5th Edition for the Dec. 2025/June 2026 Exams. This book is authored by CS N.S. Zad, with the following noteworthy features:
• [Complete Exam Coverage] Includes past exam questions up to June 2025, with solutions updated as per the latest laws
• [Chapter-wise Solved Questions] Topic-wise arrangement of past papers for targeted practice
• [Fully Updated Answers] Incorporates recent amendments, notifications, and case laws
• [Marks Distribution Charts] Chapter-wise marks analysis from June 2021 to June 2025 for strategic preparation
• [Trend Analysis & Chapter Mapping] Maps each chapter to the ICSI Study Material for complete syllabus alignment
• [Case Study Based Questions] A dedicated section for practical, case-based questions as per the new syllabus