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Law of Trademarks
Previous Year Question Paper with Solution
LLM · Group 3 Law of Intellectual Property and Information Technology
2016 Examination
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LLM Group 3 Law of Intellectual Property and Information Technology Law of Trademarks 2016 Question Paper with Solutions
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First published on munotes.in on 13 September 2026.
Published by munotes.in, Mumbai.
Model answers written and edited by the munotes.in editorial desk.
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The University does not publish an official answer key for this paper. The answers in this volume are model answers, written to show how a full-mark answer is built. They are a study aid, not an authority on what an examiner marked.
The question paper reproduced here is the paper as set by the University of Mumbai at the 2016 examination.
The law in these answers is stated as at September 2026, and four changes date most textbooks on this subject. THE INTELLECTUAL PROPERTY APPELLATE BOARD NO LONGER EXISTS: section 21 of the Tribunals Reforms Act, 2021 omitted sections 83 to 90 with 89A, and sections 92, 93, 95, 96, 99 and 100, of the Trade Marks Act with effect from 4 April 2021, so an appeal from the Registrar under section 91 now goes to the High Court, and an application for removal or rectification under section 47 or 57 goes to the Registrar or the High Court. THE TEXTILE CHAPTER IS GONE: Chapter X, sections 79 to 82, was omitted by section 7 of the Trade Marks (Amendment) Act, 2010 with effect from 8 July 2013, the day Chapter IVA brought the Madrid Protocol into Indian law. THE OFFENCES WERE CUT DOWN ON 1 AUGUST 2024: the Jan Vishwas (Amendment of Provisions) Act, 2023 omitted sections 106, 108 and 109, turned the false representation of a mark as registered under section 107 into a penalty of one half per cent of turnover or five lakh rupees, whichever is less, imposed by an adjudicating officer under the new section 112A with an appeal under section 112B, and left sections 103 to 105, on applying false trade marks and selling goods that bear them, as they were; the Jan Vishwas (Amendment of Provisions) Act, 2026 does not amend the Trade Marks Act at all. AND INDIA JOINED THE NICE AGREEMENT with effect from 7 September 2019, and the thirteenth edition of the Nice Classification has applied since 1 January 2026.
Contents
The questions below are the paper as the University of Mumbai set it at the 2016 examination, in the order it was set.
MarksPage
The Paper as Set
The questions in this volume are the questions asked at the 2016 examination, reproduced as the University of Mumbai set them, in the order it set them. Nothing has been reworded, added or left out. Only the answers are ours. See the original question paper.
Duration 3 hours · Total marks 100 · 7 questions answered
How to use this volume
Solve the paper first, under exam conditions and against the clock. Then read the answers here and mark your own. Reading a solution before attempting the question feels productive and teaches very little, because recognising an answer is not the same as being able to write one.
1.Explain the procedure for registration of a Trade Mark in India. Who is the proprietor of a Trade Mark? What are the advantages of registration of a Trade Mark?[25]
Answer
For full marks, cover: three questions in one. The PROCEDURE is a sequence, and it should be written as one, stage by stage, with the section or rule and the time limit at each stage: application, examination, acceptance, advertisement, opposition, registration, and then renewal. The PROPRIETOR is not defined, so the answer must build the concept from section 18(1) and the cases on use. The ADVANTAGES are best given as a numbered list drawn from sections 27, 28, 29, 31, 32, 52, 134 and 140.
The procedure for registration
Stage 1. Before filing. A prudent applicant searches the register for identical and similar marks in the same and related classes, because the Registrar will do the same search at examination and an opponent will do it after advertisement.
Stage 2. The application: section 18. SECTION 18(1): ANY PERSON CLAIMING TO BE THE PROPRIETOR OF A TRADE MARK USED OR PROPOSED TO BE USED BY HIM, who is desirous of registering it, applies in writing to the Registrar in the prescribed manner, now in FORM TM-A. The application states the goods or services, classified under SECTION 7 in accordance with the INTERNATIONAL CLASSIFICATION. SECTION 18(2) permits a SINGLE APPLICATION FOR SEVERAL CLASSES, with a fee for each. SECTION 18(3) requires filing in the office of the Registry within whose territory the applicant's PRINCIPAL PLACE OF BUSINESS IN INDIA lies, or for a foreign applicant, the address for service in India. Deficiencies notified under RULE 31 must be remedied WITHIN ONE MONTH or the application is treated as abandoned.
Stage 3. Examination: rule 33. The Registrar examines the application under the Act and SEARCHES EARLIER MARKS, registered or applied for, for identical or deceptively similar marks for the same or similar goods. He tests it against the ABSOLUTE GROUNDS in SECTION 9, that is lack of distinctiveness, descriptiveness, customary marks, deceptive, offensive or prohibited marks and functional shapes, and the RELATIVE GROUND in SECTION 11(1), conflict with an earlier trade mark. The other relative grounds, unfair advantage of a well known mark under section 11(2) and passing off or copyright under section 11(3), cannot found a refusal under SECTION 11(5) unless the proprietor of the earlier mark raises them in opposition. Objections are communicated in an EXAMINATION REPORT. The applicant must reply WITHIN ONE MONTH, failing which the application may be treated as abandoned. If the reply does not satisfy, a hearing is given and an order passed. Under RULE 34 an applicant may request EXPEDITED PROCESSING in FORM TM-M, and the application is then ordinarily examined within THREE MONTHS.
Stage 4. Acceptance or refusal: section 18(4) and (5). The Registrar may REFUSE the application or ACCEPT IT ABSOLUTELY OR SUBJECT TO AMENDMENTS, MODIFICATIONS, CONDITIONS OR LIMITATIONS. A refusal or conditional acceptance must be supported by grounds and materials RECORDED IN WRITING, and under RULE 36 an applicant intending to appeal may within thirty days require a written statement of them. Before registration, SECTION 19 lets the Registrar WITHDRAW an acceptance made in error, after hearing the applicant.
Stage 5. Advertisement: section 20. An accepted application, with its conditions, is ADVERTISED in the TRADE MARKS JOURNAL. The Registrar may advertise BEFORE ACCEPTANCE where section 9(1) or section 11(1) and (2) are in play, or in exceptional circumstances, and may re-advertise after a correction or amendment under section 22.
Stage 6. Opposition: section 21. ANY PERSON may, WITHIN FOUR MONTHS from the date of advertisement, give NOTICE OF OPPOSITION in FORM TM-O. The applicant must file a COUNTERSTATEMENT WITHIN TWO MONTHS of receiving the notice, or be DEEMED TO HAVE ABANDONED the application. Evidence follows by affidavit under RULES 45 TO 47, the opponent's within two months of the counterstatement, the applicant's within two months after that, and the opponent's reply within one month, each party failing to act being deemed to abandon. The Registrar hears the parties and decides, and may take into account a ground of objection WHETHER RELIED UPON BY THE OPPONENT OR NOT.
Stage 7. Registration: section 23. When the application is accepted and either the opposition period has expired without opposition or the opposition has been decided for the applicant, the Registrar REGISTERS THE MARK, the section directing that this be done WITHIN EIGHTEEN MONTHS OF FILING. The mark is registered AS OF THE DATE OF THE APPLICATION, which is deemed the DATE OF REGISTRATION. A CERTIFICATE OF REGISTRATION sealed with the Registry's seal issues under section 23(2). If registration is not completed within twelve months through the applicant's default, the Registrar may, after notice, treat the application as abandoned.
Stage 8. Duration, renewal and restoration: section 25. Registration lasts TEN YEARS and is RENEWABLE for further periods of ten years indefinitely. Renewal may be obtained with a surcharge within SIX MONTHS after expiry, and a mark removed for non payment may be RESTORED on application made after six months and within ONE YEAR from expiry.
Appeals. An order of the Registrar is appealable under SECTION 91 to the HIGH COURT within THREE MONTHS of its communication. And since 8 July 2013 an applicant may instead designate India in an INTERNATIONAL REGISTRATION under the MADRID PROTOCOL, or base an international application on an Indian application, under CHAPTER IVA.
Who is the proprietor of a trade mark
The Act does not define PROPRIETOR. SECTION 18(1) speaks only of a person CLAIMING TO BE the proprietor of a mark USED OR PROPOSED TO BE USED BY HIM. The cases supply the content.
Proprietorship comes from adoption and use, not from registration. Century Traders v. Roshan Lal Duggar and Co., AIR 1978 Del 250, holds that as between rival claimants PRIORITY IN ADOPTION AND USE, not priority in registration, decides the better right; registration is evidence of title but does not create it. S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, applies the same idea to two registered proprietors: the PRIOR USER, whose family had sold IRUTTUKADAI HALWA under the name since 1900, prevailed, because the rights recognised by passing off are independent of, and where older superior to, the rights registration confers. And Neon Laboratories Ltd. v. Medical Technologies Ltd., (2016) 2 SCC 672, gives the FIRST IN THE MARKET test pre-eminence over an earlier application not followed by use.
A proposed user can be a proprietor, but the intention must be real. American Home Products Corporation v. Mac Laboratories Pvt. Ltd., (1986) 1 SCC 465, holds that only a person claiming to be the proprietor may apply, that his intention to use must be GENUINE AND REAL at the date of application, and that intended use through a registered user counts. SECTION 46 extends this to an applicant who intends to assign the mark to a COMPANY ABOUT TO BE FORMED.
Use by others under the proprietor's control is the proprietor's use. Wander Ltd. v. Antox India P. Ltd., 1990 Supp SCC 727: a manufacturer who made goods under the proprietor's mark for the proprietor acquired no proprietorship by that use; it ENURED TO THE PROPRIETOR.
One mark, one proprietor. Power Control Appliances v. Sumeet Machines Pvt. Ltd., (1994) 2 SCC 448: there can be only ONE MARK, ONE SOURCE AND ONE PROPRIETOR. Persons who use a mark INDEPENDENTLY cannot be registered as joint proprietors under SECTION 24(1); they may be registered jointly only where none can use it except on behalf of all, or for goods with which all are connected in the course of trade, under section 24(2).
The advantages of registration
1. Exclusive right. SECTION 28(1) gives the registered proprietor the EXCLUSIVE RIGHT TO THE USE OF THE MARK for the registered goods or services, subject to any conditions and limitations.
2. The action for infringement. By SECTION 27(1) only a registered mark can be INFRINGED. The owner of an unregistered mark must sue in passing off and prove his GOODWILL, a MISREPRESENTATION and DAMAGE.
3. No need to prove reputation or deception. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980: in infringement, once the marks are identical or deceptively similar the plaintiff succeeds, and added matter does not save the defendant. For an identical mark on identical goods, SECTION 29(3) PRESUMES confusion.
4. Protection beyond the goods registered. A registered mark with a REPUTATION IN INDIA is protected against use on DISSIMILAR goods under SECTION 29(4).
5. Evidence of validity. SECTION 31(1) makes the registration PRIMA FACIE EVIDENCE OF VALIDITY in all legal proceedings, and SECTION 32 protects a mark registered without distinctiveness if it ACQUIRES DISTINCTIVENESS after registration and before challenge.
6. A convenient forum. SECTION 134(2) lets the registered proprietor or registered user sue for infringement in the DISTRICT COURT WHERE HE RESIDES OR CARRIES ON BUSINESS, instead of where the defendant is.
7. Licensing with a right to sue. Registration enables the REGISTERED USER machinery of sections 48 to 52, including the registered user's right to sue in his own name, and makes the mark an asset that can be assigned and recorded under section 45.
8. Border enforcement. SECTION 140(1) lets the proprietor or licensee of a REGISTERED mark give notice to the Collector of Customs to PROHIBIT THE IMPORTATION of infringing goods.
9. The right to say so. Only a registered mark may be represented as registered; SECTION 107 makes a false representation of registration liable to a penalty, so the proprietor alone may use the registered symbol lawfully.
10. International filing. An Indian application or registration may form the BASIS of an international application under the Madrid Protocol through SECTION 36D.
| Stage | Provision | Time limit |
|---|---|---|
| Remedy deficiencies | Rule 31 | One month |
| Reply to examination report | Rule 33(4) | One month |
| Opposition | s.21(1), Rule 42 | Four months from advertisement |
| Counterstatement | s.21(2), Rule 44 | Two months |
| Registration | s.23(1) | Within eighteen months of filing |
| Renewal | s.25(1) and (2) | Every ten years |
| Appeal to High Court | s.91 | Three months |
Conclusion. Registration of a trade mark proceeds by APPLICATION under SECTION 18 in Form TM-A by a person CLAIMING TO BE THE PROPRIETOR of a mark used or proposed to be used, classified under SECTION 7; EXAMINATION under RULE 33 against the absolute grounds in SECTION 9 and the relative grounds in SECTION 11, with a reply to the examination report within one month; ACCEPTANCE or refusal with recorded reasons under SECTION 18(4) and (5); ADVERTISEMENT in the Trade Marks Journal under SECTION 20; OPPOSITION within FOUR MONTHS under SECTION 21, with a counterstatement in two months and evidence by affidavit; and REGISTRATION under SECTION 23 as of the date of application, with a certificate, for TEN YEARS renewable under SECTION 25.
The PROPRIETOR, undefined in the Act, is the person who first ADOPTS AND USES the mark, or genuinely intends to use it, as Century Traders v. Roshan Lal Duggar and Co., S. Syed Mohideen v. P. Sulochana Bai and American Home Products Corporation v. Mac Laboratories Pvt. Ltd. establish, use under his control enuring to him as in Wander Ltd. v. Antox India P. Ltd., on the principle of one mark, one source and one proprietor. The ADVANTAGES of registration are the EXCLUSIVE RIGHT under SECTION 28, the ACTION FOR INFRINGEMENT reserved to registered marks by SECTION 27(1) without proof of reputation, protection of reputed marks across goods under SECTION 29(4), PRIMA FACIE EVIDENCE OF VALIDITY under SECTION 31, the plaintiff's forum under SECTION 134(2), the registered user machinery, CUSTOMS enforcement under SECTION 140, and the basis for international filing.
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