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December 2025Q. 5(b)(v)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(b)In 2010, GreenRoots Ayurveda Pvt. Ltd. developed a herbal supplement for liver health under the brand name ‘‘HerbWell’’, packaged in a distinctive green-and-gold bottle with a leaf-shaped cap. Over the years, the product gained immense popularity both in India and abroad, supported by significant investments in television advertising, Ayurveda health fairs and endorsements from medical professionals. By 2024, ‘‘HerbWell’’ had earned a strong reputation and was widely recognised by consumers. In 2024, another company, Herbal Wellness India Ltd., launched a liver tonic under the brand name ‘‘HerbWel+’’. Its packaging was strikingly similar to that of ‘‘HerbWell’’ and the word ‘‘HerbWel’’ was written in a nearly identical font, with only a ‘‘+’’ symbol added at the end. GreenRoots Ayurveda Pvt. Ltd. objected, asserting that this similarity was likely to mislead consumers into believing that ‘‘HerbWel+’’ was associated with or endorsed by them. They claimed that ‘‘HerbWell’’ had become a well-known trademark and that the actions of Herbal Wellness India Ltd.
amounted to passing off.
In view of the above case, answer the following questions :
(v)Referring to Himalaya Drug Co. v. S.B.L. Ltd. (2013), discuss whether GreenRoots Ayurveda Pvt. Ltd. can argue that its mark ‘‘HerbWell’’ is distinctive even though it contains the word ‘‘Herb,’’ which is commonly used in the Ayurvedic Industry.
In Himalaya Drug Co. v. S.B.L. Ltd. (2013), the Delhi High Court held that:
“Even if a part of the trademark is descriptive or commonly used in the trade, the overall mark may still be distinctive if it has acquired secondary meaning through long-standing use, advertising, and consumer recognition.”
Similarly, GreenRoots Ayurveda Pvt. Ltd. can argue that while “Herb” is a common word, the combination “HerbWell,” along with its unique packaging and reputation built since 2010, has created a distinctive identity i.e., secondary meaning.
The visual identity (green-and-gold bottle, leaf-shaped cap) and brand recognition contribute to its distinctiveness.
Therefore, HerbWell qualifies for protection against deceptively similar marks like “HerbWel+”, especially under passing off and trademark infringement principles.
Source: ICSI Guideline Answers, December 2025, Q. 5(b)(v) (Syllabus 2022).
June 2026Q. 6A(i)5 marksSyllabus 2022OR, alternative to Q. 6
(i)What is the tort of passing off in relation to unregistered trademarks ? What are the essential elements that a plaintiff must establish in an action for passing off ?
With the tremendous growth in trade and commerce, the competitors or other traders tend to imitate the well-known or reputed trademarks by imitating colour scheme or get up or packaging with a view to pass off such goods as goods of the genuine owner. In cases of registered trademarks, the owner can move the court under this Act for the infringement whereas in cases of the unregistered trademarks, the Act recognizes the Common Law remedy of passing off.
The tort of passing off is based upon the principle that “no man is entitled to represent his goods as being the goods of another man; and no man is required to use any mark, sign or symbol, device or means, whereby without making a direct representation himself to a purchaser who purchases from him, he enables such purchaser to tell a lie or to make a false representation to somebody else who is the ultimate purchase.”
The plaintiff, in an action of passing off, has to establish that his business or goods has acquired the reputation and that his mark has become distinctive of his goods among the public at large. He has to establish that there is likely hood of deception or confusion in the minds of the public. He, however, does not have to establish the fraudulent intention on the part of the defendant. Thirdly, he has to establish that confusion is likely to cause damage or injury to the reputation, goodwill and fair name of the plaintiff. He need not prove the actual loss or damage in an action of passing off.
Source: ICSI Guideline Answers, June 2026, Q. 6A(i) (Syllabus 2022).
December 2025Q. 5(b)(iv)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(b)In 2010, GreenRoots Ayurveda Pvt. Ltd. developed a herbal supplement for liver health under the brand name ‘‘HerbWell’’, packaged in a distinctive green-and-gold bottle with a leaf-shaped cap. Over the years, the product gained immense popularity both in India and abroad, supported by significant investments in television advertising, Ayurveda health fairs and endorsements from medical professionals. By 2024, ‘‘HerbWell’’ had earned a strong reputation and was widely recognised by consumers. In 2024, another company, Herbal Wellness India Ltd., launched a liver tonic under the brand name ‘‘HerbWel+’’. Its packaging was strikingly similar to that of ‘‘HerbWell’’ and the word ‘‘HerbWel’’ was written in a nearly identical font, with only a ‘‘+’’ symbol added at the end. GreenRoots Ayurveda Pvt. Ltd. objected, asserting that this similarity was likely to mislead consumers into believing that ‘‘HerbWel+’’ was associated with or endorsed by them. They claimed that ‘‘HerbWell’’ had become a well-known trademark and that the actions of Herbal Wellness India Ltd.
amounted to passing off.
In view of the above case, answer the following questions :
(iv)What elements must GreenRoots Ayurveda Pvt. Ltd. establish to succeed in a passing off action ?
The plaintiff (GreenRoots Ayurveda Pvt. Ltd), in an action of passing off, has to establish that-
•his business or goods has acquired the reputation and that his mark has become distinctive of his goods among the public at large.
•there is likely hood of deception or confusion in the minds of the public. He, however, does not have to establish the fraudulent intention on the part of the defendant.
•confusion is likely to cause damage or injury to the Reputation, goodwill and fair name of the plaintiff. He need not prove the actual loss or damage in an action of passing off.
Source: ICSI Guideline Answers, December 2025, Q. 5(b)(iv) (Syllabus 2022).
December 2025Q. 5(b)(ii)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(b)In 2010, GreenRoots Ayurveda Pvt. Ltd. developed a herbal supplement for liver health under the brand name ‘‘HerbWell’’, packaged in a distinctive green-and-gold bottle with a leaf-shaped cap. Over the years, the product gained immense popularity both in India and abroad, supported by significant investments in television advertising, Ayurveda health fairs and endorsements from medical professionals. By 2024, ‘‘HerbWell’’ had earned a strong reputation and was widely recognised by consumers. In 2024, another company, Herbal Wellness India Ltd., launched a liver tonic under the brand name ‘‘HerbWel+’’. Its packaging was strikingly similar to that of ‘‘HerbWell’’ and the word ‘‘HerbWel’’ was written in a nearly identical font, with only a ‘‘+’’ symbol added at the end. GreenRoots Ayurveda Pvt. Ltd. objected, asserting that this similarity was likely to mislead consumers into believing that ‘‘HerbWel+’’ was associated with or endorsed by them. They claimed that ‘‘HerbWell’’ had become a well-known trademark and that the actions of Herbal Wellness India Ltd.
amounted to passing off.
In view of the above case, answer the following questions :
(ii)Explain how the Trade Mark Rules 2017 provide a mechanism for a trademark like ‘‘HerbWell’’ to be declared a well-known trademark.
The Trade Mark Rules,2017 provide a formal mechanism to declare a trademark as “well-known.”
Rule 124 states provisions relating to determination of Well-Known Trademark by Registrar as follows:-
(1)Any person may, on an application in Form TM-M and after payment of fee as mentioned in First schedule, request the Registrar for determination of a trademark as well-known. Such request shall be accompanied by a statement of case along with all the evidence and documents relied by the applicant in support of his claim.
(2)The Registrar shall, while determining the trademark as well-known take in to account the provisions of sub section (6) to (9) of section 11.
(3)For the purpose of determination, the Registrar may call such documents as he thinks fit.
(4)Before determining a trademark as well-known, the Registrar may invite objections from the general public to be filed within thirty days from the date of invitation of such objection.
(5)In case the trademark is determined as well-known, the same shall be published in the trademark Journal and included in the list of well-known trademarks maintained by the Registrar.
(6)The Registrar may, at any time, if it is found that a trademark has been erroneously or inadvertently included or is no longer justified to be in the list of well-known trademarks, remove the same from the list after providing due opportunity of hearing to the concerned party.
Source: ICSI Guideline Answers, December 2025, Q. 5(b)(ii) (Syllabus 2022).
December 2024Q. 6(a)(ii)3 marksSyllabus 2022
(a)‘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 ?
(ii)Why Registrar will protect ‘EcoSustain World’ ?
With coming up of the Trade Mark Rules 2017, a new procedure has been created that allows the Registrar to proclaim a particular trademark as “well known”. According to the Trade Mark Rules 2017, a trademark owner can file an application in form TM-M with a request made to the Registrar for declaring the mark to be “well-known”. 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 recognised 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.
Source: ICSI Guideline Answers, December 2024, Q. 6(a)(ii) (Syllabus 2022).
December 2025Q. 6(b)5 marksSyllabus 2022
(b)Goyal Ltd. has registered its logo, a stylized ‘‘T’’, without specifying any color limitations whereas, Royal Ltd. has registered its logo, a stylized ‘‘S’’ with a specific color combination — green and white. Discuss whether there is any limitation as to colour as per Section 10 of the Trade Marks Act, 1999 ?
Section 10 of the Trade Marks Act, 1999 provides that a trade mark may be limited wholly or in part to any combination of colours and any such limitation shall be taken into consideration by the Registrar or the High Court, as the case may be having to decide on the distinctive character of the trade mark.
So far as a trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours.
Goyal Ltd. logo is deemed to be registered for all colors. It can use its logo in any colour without infringing on its own trademark rights.
In case of Royal Ltd., this limitation to specific colors will be considered by the Registrar or the High Court when deciding on the distinctive character of the trade mark. If another company tries to use a similar logo in the same color combination, it could be considered an infringement of its trademark.
Source: ICSI Guideline Answers, December 2025, Q. 6(b) (Syllabus 2022).
December 2024Q. 5(a)(iv)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(a)“Energize-52” is a popular cough syrup manufactured since 2015 by “Jeevan Pharma Company”. The trade mark “Energize-52” was registered in 2017, and almost seven years had expired from the date of its registration. This syrup was highly popular among the consumers who asked for “Energize-52” over the other syrups available and the voluminous sales figures prove its widespread consumer recognition. In January 2024 “Jeevan Pharma Company”
discovered that a new Competitor in the market had also launched a similar syrup under the brand name “Energize-T” using a logo and brand name that is deceptively similar to the registered trade mark of “Energize-52”.
In view of the above case, answer the following questions with support of relevant provisions of the Trade Marks Act, 1999 :
(iv)What are the relative grounds for refusal of trade mark registration ?
Section 11(1) of the Trade Marks Act, 1999 stipulate on Relative Grounds for Refusal of Registration.
Section 11(1) provides that a trade mark shall not be registered if, because of:
(a)its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or
(b)its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
Section 11 (2) states that a trade mark which (a) is identical with or similar to an earlier trade mark; and (b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.
Section 11 (3) provides that a trade mark shall not be registered if, or to the extent that, its use in India is liable to be prevented—
(a)by virtue of any law in particular the law of passing off protecting an unregistered trade mark used in the course of trade; or
(b)by virtue of law of copyright.
Source: ICSI Guideline Answers, December 2024, Q. 5(a)(iv) (Syllabus 2022).
June 2025Q. 6(d)5 marksSyllabus 2022
(d)A Pharmaceutical company develops a new drug with a specific chemical compound ‘Carbon Dioxide’. The Company applied ‘Carbon Dioxide’ to register it as Trademark.
Whether this Trademark can be granted as per the Trade Marks, Act, 1999 ?
Section 13 of the Trade Marks Act, 1999 states that no word:
(a)which is the commonly used and accepted name of any single chemical element or any single chemical compound (as distinguished from a mixture) in respect of a chemical substance or preparation, or
(b)which is declared by the World Health Organisation and notified in the prescribed manner by the Registrar from time to time, as an international non-proprietary name or which is deceptively similar to such name, shall be registered as a trade mark and any such registration shall be deemed for the purpose of section 57 to be an entry made in the register without sufficient cause or an entry wrongly remaining on the register, as the circumstances may require.
In the given case, ‘Carbon Dioxide’ is a commonly used and accepted name for a single chemical compound. Hence, it cannot be registered as Trademark.
(5 Marks)
Source: ICSI Guideline Answers, June 2025, Q. 6(d) (Syllabus 2022).
December 2024Q. 5(a)(v)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(a)“Energize-52” is a popular cough syrup manufactured since 2015 by “Jeevan Pharma Company”. The trade mark “Energize-52” was registered in 2017, and almost seven years had expired from the date of its registration. This syrup was highly popular among the consumers who asked for “Energize-52” over the other syrups available and the voluminous sales figures prove its widespread consumer recognition. In January 2024 “Jeevan Pharma Company”
discovered that a new Competitor in the market had also launched a similar syrup under the brand name “Energize-T” using a logo and brand name that is deceptively similar to the registered trade mark of “Energize-52”.
In view of the above case, answer the following questions with support of relevant provisions of the Trade Marks Act, 1999 :
(v)What orders can the Court pass against the competitor’s use of the trade mark “Energize-T” ?
The Court can restrain the competitor from using the trademark “Energize-T” and can allow them to amend ‘its mark to one that would not be similar to the trademark “Energize-52” of “Jeevan Pharma Company’.
Source: ICSI Guideline Answers, December 2024, Q. 5(a)(v) (Syllabus 2022).
June 2025Q. 6A(iii)5 marksSyllabus 2022OR, alternative to Q. 6
(iii)Who is ‘‘Trademark Agent’’ ? State the qualifications for registration of trademark agent under the law relating to trademarks.
Trade Mark Agent Section 145 of the Trade Marks Act, 1999 deals with agents and provide that where, by or under the Trade Marks Act, any act, other than the making of an affidavit, is required to be done before the Registrar by any person, the act may, subject to the rules made in this behalf, be done instead of by that person himself, by a person duly authorised in the prescribed manner, who is-
(a)a legal practitioner, or
(b)a person registered in the prescribed manner as a trade marks agent, or
(c)a person in the sole and regular employment of the principal.
Qualifications for Registration Rule 144 of the Trade Marks Rule, 2017 states that subject to the provisions of Rule 145, a person shall be qualified to be registered as a trademark’s agent if he-
(i)is a citizen of India,
(ii)is not less than 21 years of age;
(iii)is a graduate of any university in India or possesses an equivalent qualification and has passed the examination prescribed in rule 148 or is an Advocate within the meaning of the Advocates Act, 1961 or is a member of the Institute of Company Secretaries of India;
(iv)is considered by the Registrar as a fit and proper person to be registered as a trademark agent.
(5 Marks)
Source: ICSI Guideline Answers, June 2025, Q. 6A(iii) (Syllabus 2022).
June 2026Q. 5(b)(i)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(b)BrightGlow Cosmetics Pvt. Ltd. has been making and selling herbal cosmetic products under the brand name “NATURAGLOW” since 2015. They have registered this name under the Trade Marks Act, 1999 for their cosmetic products. Over the years, they have spent a lot of money on advertising and their brand has become well-known and popular among customers.
In 2023, another company called NaturalGlow Herbals Pvt. Ltd. started selling similar cosmetic products using the mark “NATURAGLO”. They also copied the same colour combination and packaging style. BrightGlow claims that the new mark is very similar to their own and will confuse customers. They also say that NaturalGlow is violating their trademark by using a similar name in their company.
NaturalGlow defended itself by arguing that the words “Natura” and “Glow” are common words used in the cosmetics industry and cannot be owned by one company. They also said that there was no real chance of confusion among buyers.
Meanwhile, BrightGlow applied for registration of a new logo. The Registrar raised objections under Section 9 on the ground that the mark lacked distinctiveness. However, the mark was later advertised. Within the prescribed period, a third party filed a notice of opposition against the registration.
BrightGlow has now filed a suit for infringement and passing off against NaturalGlow.
Based on above facts, answer the following questions with legal provision in reference to Trade Marks Act, 1999.
(i)Whether “NATURAGLO” can be considered deceptively similar to “NATURAGLOW” ?
Under Section 2(1)(h) of the Trade Marks Act, 1999, a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.
The marks “NATURAGLOW” and “NATURAGLO” are phonetically and visually similar. The difference in spacing or minor variation does not materially distinguish the marks. Since both are used in respect of similar cosmetic goods, likelihood of confusion among consumers is probable. Therefore, the defendant’s mark may be held deceptively similar.
Source: ICSI Guideline Answers, June 2026, Q. 5(b)(i) (Syllabus 2022).
June 2024Q. 6A(ii)5 marksSyllabus 2022OR, alternative to Q. 6
(ii)What is meant by Trade Mark under the Intellectual Property Rights ?
The term trade mark has been defined under Section 2(1) (zb) of the Trade Marks Act, 1999 as to mean 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; and–
(i)in relation to Chapter XII (other than section 107), a registered trade mark or a mark used 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, as the case may be, and some person having the right as proprietor to use the mark; and
(ii)in relation to other provisions of this Act, a mark used or proposed to be used 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, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark.
A trademark acts as an effective form of advertising for the goods and their quality since it denotes the relationship between the merchant and the items during the course of commerce. The goal of trademark law is to give businesses the ability to acquire an exclusive right to use, share, or assign a mark by registering their mark. Similar to this, service marks set one company’s services apart from those of other companies. Various combinations of words, letters, numbers, symbols, drawings, images, and even sounds can be used as a trademark. These are typically registered for seven years, but by reapplying they can be renewed indefinitely. It guarantees the owner of the mark the sole right to use it to distinguish products or services, or to grant another person permission to use it in exchange for payment. Because of the nature and quality of the goods or service, which are denoted by its distinctive trademark, it aids consumers in recognising and purchasing it.
Source: ICSI Guideline Answers, June 2024, Q. 6A(ii) (Syllabus 2022).
December 2025Q. 5(b)(i)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(b)In 2010, GreenRoots Ayurveda Pvt. Ltd. developed a herbal supplement for liver health under the brand name ‘‘HerbWell’’, packaged in a distinctive green-and-gold bottle with a leaf-shaped cap. Over the years, the product gained immense popularity both in India and abroad, supported by significant investments in television advertising, Ayurveda health fairs and endorsements from medical professionals. By 2024, ‘‘HerbWell’’ had earned a strong reputation and was widely recognised by consumers. In 2024, another company, Herbal Wellness India Ltd., launched a liver tonic under the brand name ‘‘HerbWel+’’. Its packaging was strikingly similar to that of ‘‘HerbWell’’ and the word ‘‘HerbWel’’ was written in a nearly identical font, with only a ‘‘+’’ symbol added at the end. GreenRoots Ayurveda Pvt. Ltd. objected, asserting that this similarity was likely to mislead consumers into believing that ‘‘HerbWel+’’ was associated with or endorsed by them. They claimed that ‘‘HerbWell’’ had become a well-known trademark and that the actions of Herbal Wellness India Ltd.
amounted to passing off.
In view of the above case, answer the following questions :
(i)Define the ‘‘well-known trademark’’ as per Section 2(1) (zg) of the Trade Marks Act, 1999.
In terms of Section 2(1)(zg) of the Trade Marks Act,1999, a well-known trade mark 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.
Source: ICSI Guideline Answers, December 2025, Q. 5(b)(i) (Syllabus 2022).
December 2025Q. 5(b)(iii)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(b)In 2010, GreenRoots Ayurveda Pvt. Ltd. developed a herbal supplement for liver health under the brand name ‘‘HerbWell’’, packaged in a distinctive green-and-gold bottle with a leaf-shaped cap. Over the years, the product gained immense popularity both in India and abroad, supported by significant investments in television advertising, Ayurveda health fairs and endorsements from medical professionals. By 2024, ‘‘HerbWell’’ had earned a strong reputation and was widely recognised by consumers. In 2024, another company, Herbal Wellness India Ltd., launched a liver tonic under the brand name ‘‘HerbWel+’’. Its packaging was strikingly similar to that of ‘‘HerbWell’’ and the word ‘‘HerbWel’’ was written in a nearly identical font, with only a ‘‘+’’ symbol added at the end. GreenRoots Ayurveda Pvt. Ltd. objected, asserting that this similarity was likely to mislead consumers into believing that ‘‘HerbWel+’’ was associated with or endorsed by them. They claimed that ‘‘HerbWell’’ had become a well-known trademark and that the actions of Herbal Wellness India Ltd.
amounted to passing off.
In view of the above case, answer the following questions :
(iii)How would a declaration of ‘‘HerbWell’’ as a well-known trademark strengthen GreenRoots Ayurveda Pvt. Ltd.’s legal position against Herbal Wellness India Ltd. ?
If “HerbWell” is declared a well-known trademark, GreenRoots Ayurveda Pvt. Ltd. gains stronger legal protection across India, regardless of geographic or product limitations. This makes it easier to prevent competitors like Herbal Wellness India Ltd. from using deceptively similar names or packaging, as courts recognize the high reputation and goodwill associated with well-known marks. Such a declaration increases the likelihood of success in infringement and passing-off cases, deterring imitation and protecting the brand’s market position and consumer trust.
Source: ICSI Guideline Answers, December 2025, Q. 5(b)(iii) (Syllabus 2022).
December 2024Q. 6(a)(i)2 marksSyllabus 2022
(a)‘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.
Yes, ‘EcoSustain World’ can protect its well-known Trademark in India.
In terms of Section 2(1)(zg) of the Trade Marks Act, 1999, a well-known trade mark 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.
For Example: 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.
Source: ICSI Guideline Answers, December 2024, Q. 6(a)(i) (Syllabus 2022).
June 2026Q. 5(b)(ii)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(b)BrightGlow Cosmetics Pvt. Ltd. has been making and selling herbal cosmetic products under the brand name “NATURAGLOW” since 2015. They have registered this name under the Trade Marks Act, 1999 for their cosmetic products. Over the years, they have spent a lot of money on advertising and their brand has become well-known and popular among customers.
In 2023, another company called NaturalGlow Herbals Pvt. Ltd. started selling similar cosmetic products using the mark “NATURAGLO”. They also copied the same colour combination and packaging style. BrightGlow claims that the new mark is very similar to their own and will confuse customers. They also say that NaturalGlow is violating their trademark by using a similar name in their company.
NaturalGlow defended itself by arguing that the words “Natura” and “Glow” are common words used in the cosmetics industry and cannot be owned by one company. They also said that there was no real chance of confusion among buyers.
Meanwhile, BrightGlow applied for registration of a new logo. The Registrar raised objections under Section 9 on the ground that the mark lacked distinctiveness. However, the mark was later advertised. Within the prescribed period, a third party filed a notice of opposition against the registration.
BrightGlow has now filed a suit for infringement and passing off against NaturalGlow.
Based on above facts, answer the following questions with legal provision in reference to Trade Marks Act, 1999.
(ii)What is the purpose of advertisement of BrightGlow’s mark ?
According to Section 20 of the Trade Marks Act, 1999, once the Registrar for registration has accepted the application, he shall get the application advertised in the prescribed manner after acceptance.
However, the application shall be advertised before acceptance if the application is related to a trademark to which Section 9(1) and Section 11(1) & (2) apply or in any other case as it seems expedient to the Registrar.
The purpose of advertisement is to give information to the public at large in respect of the trademark advertised and afford an opportunity to oppose the registration of the mark on given grounds.
Source: ICSI Guideline Answers, June 2026, Q. 5(b)(ii) (Syllabus 2022).
June 2026Q. 5(b)(iv)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(b)BrightGlow Cosmetics Pvt. Ltd. has been making and selling herbal cosmetic products under the brand name “NATURAGLOW” since 2015. They have registered this name under the Trade Marks Act, 1999 for their cosmetic products. Over the years, they have spent a lot of money on advertising and their brand has become well-known and popular among customers.
In 2023, another company called NaturalGlow Herbals Pvt. Ltd. started selling similar cosmetic products using the mark “NATURAGLO”. They also copied the same colour combination and packaging style. BrightGlow claims that the new mark is very similar to their own and will confuse customers. They also say that NaturalGlow is violating their trademark by using a similar name in their company.
NaturalGlow defended itself by arguing that the words “Natura” and “Glow” are common words used in the cosmetics industry and cannot be owned by one company. They also said that there was no real chance of confusion among buyers.
Meanwhile, BrightGlow applied for registration of a new logo. The Registrar raised objections under Section 9 on the ground that the mark lacked distinctiveness. However, the mark was later advertised. Within the prescribed period, a third party filed a notice of opposition against the registration.
BrightGlow has now filed a suit for infringement and passing off against NaturalGlow.
Based on above facts, answer the following questions with legal provision in reference to Trade Marks Act, 1999.
(iv)What benefits does BrightGlow acquire by registration of its trademark under the Trade Marks Act, 1999 ?
According to section 28 of the Trademark Act, 1999, the registration of a trademark confers upon the owner the exclusive right to the use the trademark in relation to the goods or services in respect of which the mark is registered and to indicate so by using the symbol (R), and seek the relief of infringement in appropriate courts in the country. The exclusive right is however subject to any conditions entered on the register such as limitation of area of use etc.
Also, where two or more persons have registered identical or nearly similar marks due to special circumstances, such exclusive right does not operate against each other.
Source: ICSI Guideline Answers, June 2026, Q. 5(b)(iv) (Syllabus 2022).
December 2024Q. 5(a)(i)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(a)“Energize-52” is a popular cough syrup manufactured since 2015 by “Jeevan Pharma Company”. The trade mark “Energize-52” was registered in 2017, and almost seven years had expired from the date of its registration. This syrup was highly popular among the consumers who asked for “Energize-52” over the other syrups available and the voluminous sales figures prove its widespread consumer recognition. In January 2024 “Jeevan Pharma Company”
discovered that a new Competitor in the market had also launched a similar syrup under the brand name “Energize-T” using a logo and brand name that is deceptively similar to the registered trade mark of “Energize-52”.
In view of the above case, answer the following questions with support of relevant provisions of the Trade Marks Act, 1999 :
(i)Is there an infringement of the trade mark “Energize-52” by the new competitor ?
Yes, there is an infringement of the trademark “Energize-52” by the new competitor through its use of the trademark “Energize-T”. “Energize-52” has been in use since 2015, was registered in the year 2017 and almost seven years have expired from the date of its registration. Since then, it has achieved distinctiveness through voluminous sales and widespread consumer recognition.
Source: ICSI Guideline Answers, December 2024, Q. 5(a)(i) (Syllabus 2022).
June 2026Q. 5(b)(iii)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(b)BrightGlow Cosmetics Pvt. Ltd. has been making and selling herbal cosmetic products under the brand name “NATURAGLOW” since 2015. They have registered this name under the Trade Marks Act, 1999 for their cosmetic products. Over the years, they have spent a lot of money on advertising and their brand has become well-known and popular among customers.
In 2023, another company called NaturalGlow Herbals Pvt. Ltd. started selling similar cosmetic products using the mark “NATURAGLO”. They also copied the same colour combination and packaging style. BrightGlow claims that the new mark is very similar to their own and will confuse customers. They also say that NaturalGlow is violating their trademark by using a similar name in their company.
NaturalGlow defended itself by arguing that the words “Natura” and “Glow” are common words used in the cosmetics industry and cannot be owned by one company. They also said that there was no real chance of confusion among buyers.
Meanwhile, BrightGlow applied for registration of a new logo. The Registrar raised objections under Section 9 on the ground that the mark lacked distinctiveness. However, the mark was later advertised. Within the prescribed period, a third party filed a notice of opposition against the registration.
BrightGlow has now filed a suit for infringement and passing off against NaturalGlow.
Based on above facts, answer the following questions with legal provision in reference to Trade Marks Act, 1999.
(iii)If the marks and goods are identical, what presumption will the Court make regarding confusion ?
In the case of Renaissance Hotel Holdings Inc. vs. B. Vijaya Sai and Ors., the Hon’ble Supreme Court of India observed that under Section 29(3), where the defendant’s mark is identical to the registered trademark; and the goods or services are identical, the Court shall presume that such use is likely to cause confusion on the part of the public. In such cases, actual proof of confusion is not required.
Source: ICSI Guideline Answers, June 2026, Q. 5(b)(iii) (Syllabus 2022).
June 2026Q. 5(b)(v)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(b)BrightGlow Cosmetics Pvt. Ltd. has been making and selling herbal cosmetic products under the brand name “NATURAGLOW” since 2015. They have registered this name under the Trade Marks Act, 1999 for their cosmetic products. Over the years, they have spent a lot of money on advertising and their brand has become well-known and popular among customers.
In 2023, another company called NaturalGlow Herbals Pvt. Ltd. started selling similar cosmetic products using the mark “NATURAGLO”. They also copied the same colour combination and packaging style. BrightGlow claims that the new mark is very similar to their own and will confuse customers. They also say that NaturalGlow is violating their trademark by using a similar name in their company.
NaturalGlow defended itself by arguing that the words “Natura” and “Glow” are common words used in the cosmetics industry and cannot be owned by one company. They also said that there was no real chance of confusion among buyers.
Meanwhile, BrightGlow applied for registration of a new logo. The Registrar raised objections under Section 9 on the ground that the mark lacked distinctiveness. However, the mark was later advertised. Within the prescribed period, a third party filed a notice of opposition against the registration.
BrightGlow has now filed a suit for infringement and passing off against NaturalGlow.
Based on above facts, answer the following questions with legal provision in reference to Trade Marks Act, 1999.
(v)Can the use of “NATURAGLO” as part of a corporate name amount to infringement ?
According to Section 29(5) of the Trade Marks Act, a registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
Thus, use of “NATURAGLO” as part of a corporate name amounts to infringement.
Source: ICSI Guideline Answers, June 2026, Q. 5(b)(v) (Syllabus 2022).
December 2024Q. 5(a)(ii)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(a)“Energize-52” is a popular cough syrup manufactured since 2015 by “Jeevan Pharma Company”. The trade mark “Energize-52” was registered in 2017, and almost seven years had expired from the date of its registration. This syrup was highly popular among the consumers who asked for “Energize-52” over the other syrups available and the voluminous sales figures prove its widespread consumer recognition. In January 2024 “Jeevan Pharma Company”
discovered that a new Competitor in the market had also launched a similar syrup under the brand name “Energize-T” using a logo and brand name that is deceptively similar to the registered trade mark of “Energize-52”.
In view of the above case, answer the following questions with support of relevant provisions of the Trade Marks Act, 1999 :
(ii)What defences can be pleaded by “Energize-T” ?
The present case is similar to the case of Himalaya Drug Company vs. S.B.L. Ltd. 2013 (53) PTC 1 (Del.) (DB), the competitor can raise the defence that the mark “Energize” is publici juris (belonging to the public), and there is no similarity between the two trademarks. ‘Energize’ will be considered the generic and non-distinctive part of the mark, and it is to be ignored even if the two rival marks are to be taken as a whole.
Source: ICSI Guideline Answers, December 2024, Q. 5(a)(ii) (Syllabus 2022).
June 2025Q. 6(c)5 marksSyllabus 2022
(c)ABC Ltd., incorporated in 1996 deals in Plywood under the Trade Names ‘UNIPLY’. It came to know in 1999 that XYZ Ltd. is also using the Name ‘UNIPLY’. ABC Ltd. filed a suit against the XYZ Ltd. along with an application for a Temporary Injunction. The Court granted an ex-parte temporary injunction to the Appellant. In turn, XYZ Ltd. also filed appeal against ABC Ltd.
claiming that it was incorporated in 1993 and they have been carrying business under the Name of ‘UNIPLY’ since 1993. XYZ Ltd. claimed the prior use of Marks in question.
Explain, whether XYZ Ltd. can be restrained from using the name ‘UNIPLY’ with reference to a case law as per the Trade Marks Act, 1999 ?
Section 31 of the Trade Marks Act, 1999 stipulates that in all legal proceedings relating to trade mark registered under the Act, the original registration and all subsequent assignments and transmission thereof shall be prima facie evidence of its validity. However, as per Section 34 the proprietor or a registered user of a registered trademark is not entitled to interfere with or restrain the use by any person of a trademark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a prior date.
Therefore, in case of unregistered marks, the owner of the trade mark may lodge a case against passing off action in case his trademark is used by some other person. It has been held by the courts in various cases and the ownership of a trademark is decided by its usage in commercial transactions.
The Supreme Court in Uniply Industries Ltd. vs. Unicorn Plywood Pvt. Ltd. and 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.
So, XYZ Ltd. cannot be restrained from using the name ‘UNIPLY’ as it is using this name since 1993.
(5 Marks)
Source: ICSI Guideline Answers, June 2025, Q. 6(c) (Syllabus 2022).
June 2026Q. 6(d)5 marksSyllabus 2022
(d)Nature Fresh Pvt. Ltd. obtained registration of the trade mark “GREENBITE” in 2016 for packaged fruit juices. However, after registration, the company did not start production or sale of fruit juices under the said trade mark for several years. In 2023, another company Healthy Drinks Ltd. applied to the Registrar for removal of the trade mark “GREENBITE”
from the register, claiming that the mark had not been used for more than five years from the date of its registration. Nature Fresh Pvt. Ltd. argued that the non-use of the mark was due to government restrictions on the import of certain ingredients required for manufacturing the product, which prevented them from using the mark.
State the provision relating to Removal of Trade Mark for Non-use. Discuss whether the non-use of the trade mark by Nature Fresh Pvt. Ltd. can be justified on the ground of special circumstances in trade under Section 47(3) of the Trade Marks Act, 1999.
Section 47 of the Trade Marks Act 1999 deals with removal of a trade mark from the register on the ground of non-use and provides that a trade mark which is not used within five years of its registration, becomes liable for removal either completely or in respect of those goods or services for which the mark has not been used. The five years period starts from the date on which the trade mark is actually entered on the register.
However, Section 47(3) protects a mark from being removed from the register on ground of non-use if such non-use is shown to have been due to special circumstances in the trade which may include restriction imposed by any law or regulation on the use of trade mark in India and not to any intention to abandon or not to use the trade mark in relation to the goods or services to which the application relates.
In the present case, the trade mark “GREENBITE” was registered in 2016, and more than five years have elapsed without use of the mark, making it liable to be removed from the register on the ground of non-use. However, Nature Fresh Pvt. Ltd. contends that the non-use occurred due to government restrictions on the import of certain ingredients required for manufacturing the fruit juices If these restrictions prevented the company from producing the goods and using the trade mark, it may constitute special circumstances in trade.
Therefore, if Nature Fresh Pvt. Ltd. proves that the non-use of the trade mark was due to government restrictions and not due to an intention to abandon the mark, the non-use may be justified under Section 47(3) and the trade mark may not be removed from the register.
Source: ICSI Guideline Answers, June 2026, Q. 6(d) (Syllabus 2022).
December 2024Q. 5(a)(iii)2 marksSyllabus 2022
Show the facts common to all parts of Q. 5
(a)“Energize-52” is a popular cough syrup manufactured since 2015 by “Jeevan Pharma Company”. The trade mark “Energize-52” was registered in 2017, and almost seven years had expired from the date of its registration. This syrup was highly popular among the consumers who asked for “Energize-52” over the other syrups available and the voluminous sales figures prove its widespread consumer recognition. In January 2024 “Jeevan Pharma Company”
discovered that a new Competitor in the market had also launched a similar syrup under the brand name “Energize-T” using a logo and brand name that is deceptively similar to the registered trade mark of “Energize-52”.
In view of the above case, answer the following questions with support of relevant provisions of the Trade Marks Act, 1999 :
(iii)What defences can be raised by “Energize-52” to prove the distinctiveness of its trade mark ?
“Energize-52” can provide evidence that it had voluminous sales, was being manufactured since the year 2015 and was registered since the year 2017 and as seven years had expired from the date of the registration, the Registration of the trade mark was taken to be valid as per Trade Marks Act. Their mark has distinctiveness can be proved by providing the orders where the mark has been granted protection. The consumer asked for their product with all its essential and prominent features of the mark.
Source: ICSI Guideline Answers, December 2024, Q. 5(a)(iii) (Syllabus 2022).
June 2024Q. 6(d)5 marksSyllabus 2022
(d)What are the absolute grounds for refusal of Registration of trade mark under Section 9(l) of the Trade Mark Act, 1999 ?
Section 9(1) of the Trade Mark Act 1999 containing provisions relating to absolute grounds for refusal for registration prohibit the registration of those trademarks,
(a)which are devoid of any distinctive character, that is to say, not capable of distinguishing the 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, shall not be registered.
It may be noted that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.
Source: ICSI Guideline Answers, June 2024, Q. 6(d) (Syllabus 2022).
June 2024Q. 6(b)5 marksSyllabus 2022
(b)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 ?
No, Priya will not succeed in registering such a Trade Mark under the Trade Marks Act, 1999.
According to Section 9(2) of the Trade Marks Act, 1999the following trademark shall not be registered:
1.If the trademark tends to deceive the public or cause any confusion,
2.In any instance if the trademark hurts any religious sentiment of any demographic section of Indian citizens,
3.It comprises or contains scandalous or obscene matter,
4.Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
In the case of Amritpal Singh vs. Lal Babu Priyadarshi 2005 (30) PTC 94, 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.
Source: ICSI Guideline Answers, June 2024, Q. 6(b) (Syllabus 2022).