The Single Bench of the Delhi High Court in the case of The Institute of Chartered Accountants of India vs The Institute of Cost Accountants of India consisting of Justice C. Hari Shankar restrained The Institute of Cost Accountants of India from using ICAI as an acronym for their institution or services.
Facts:
Indian Chartered Accountants Institute is the plaintiff. Indian Cost Accountants Institute is the defendant. The plaintiff and defendant both use the acronym ICAI. The plaintiff sought to prevent the defendant from using the acronym in any manner at all. The plaintiff filed I.A. 7230/2021 with the plaint under O39 Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC) for interlocutory injunctive relief.
Procedural History:
The Registrar of Trademarks registered the plaintiff's word mark ICAI in Class 41 of the Nice Classification, which covers Education and Training, on March 25, 2011. The plaintiff traditionally assists Chartered Accountants, whereas the defendant, the Institute of Cost Accountants, assists Cost Accountants.
The plaintiff claimed to have used the ICAI mark since 1949. In 2012, the defendant was renamed the Institute of Cost Accountants. Since 1959, the defendant was the Indian Institute of Cost and Works Accountants. (ICWAI). The defendant requested a name change from the Institute of Cost and Works Accountants of India (ICWAI) to the ICMAI from the Ministry of Corporate Affairs (MCA). The plaintiff objected to this idea and wrote to the MCA suggesting that the defendant should be called the Institute of Cost Neutral Accountants of India. The MCA renamed the defendant institution from The Institute of Cost and Works Accountants of India to The Institute of Cost Accountants of India on February 1, 2012.
Contentions Made:
Plaintiff: It was claimed that the plaintiff had the superiority of registration and use of the ICAI acronym. Section 29(2)(c) read with Section 29(3)1 of the Trademarks Act, 1999 was used to argue that the defendant's ICAI acronym infringes the plaintiff's registered ICAI word mark because the acronyms are identical. Since the plaintiff and defendant supplied similar services, the defendant's use of the impugned acronym would mislead the public into confusing the defendant's institution with the plaintiff's.
Defendant: The plaintiff had accepted the defendant's use of the disputed ICAI mark, making the complaint defective on grounds of delay and acquiescence. Since 2015, the defendant's website www.icai.org has used the ICAI acronym, thus it seemed unlikely the plaintiff was unaware. The defendant institution changed its name to the Institute of Cost Accountants of India after the plaintiff contacted the MCA. The defendant had no intent to deceive the plaintiff or consumers by using the disputed ICAI abbreviation, hence no passing-off claim could be made against him. Reliance was placed on Essel Propack Ltd. v. Essel Kitchenware Ltd.
Observations of the Court:
The Bench noted that both parties used identical acronyms. Thus, the matter involved Section 29(2)(c) and Section 29(3) of the Trademarks Act. Section 29(3), coupled with Section 29(2)(c), plainly states that the Court shall presume the likelihood of confusion amongst the public when the plaintiff and defendant's trademarks and their goods or services are the same. Section 29(3) read with Section 29(2)(c) of the Trademarks Act supported a prima facie conclusion of such public confusion due to the defendant's use of the disputed ICAI mark.
It even dealt with a hypothetical situation where a media notice inviting ICAI membership applications may conceivably be issued. A chartered accountant who wants to join the plaintiff Institute applies for membership believing the notice applies to the plaintiff. After contacting the concerned person, the chartered accountant may learn that the notice was issued by the defendant, not the plaintiff. After being corrected, the chartered accountant does not apply:
“That, before he could proceed further, the chartered accountant was made aware of the fact that the notice was actually pertaining to the defendant, and not the plaintiff, does not wipe out, or efface, the confusion that had taken place, solely on account of the use, by the defendant, of the ICAI acronym. That, by itself, suffices as “confusion” within the meaning of Section 29(2) of the Trademarks Act.”
It also noted that initial interest confusion‖ permeates both infringement and passing off. The initial interest confusion must occur as a result of the use, by the defendant, of the infringing mark. It opined that since the plaintiff and defendant are using the same mark, ICAI, for identical services, namely education and training, the marks alone were bound to confuse the observer. The possibility of resolving uncertainty by adding material or information does not negate Section 29(2)(c) read with Section 29(3).
It relied on Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceuticals Laboratories, where it was held that if the essential features of the plaintiff’s trademark have been adopted by the defendant, then it wouldn’t matter if the appearance, packaging, and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences or clearly indicate a trade origin different from that of the registered proprietor of the mark.
Hence, it held that a clear prima facie case of infringement was made out in this case, by the defendant’s usage of the impugned ICAI acronym, to designate its institution.
Regarding the ground of delay or acquiescence, it noted that in July 2015, the plaintiff wrote to the Ministry of Corporate Affairs on 6th July 2016, 2nd June 2017, 19th June 2017, 15th December 2017, 20th March 2018, 28th May 2020, and 17th June 2020 to object to the defendant's use of the impugned ICAI acronym. Protests continued until May 2020. Thus, the plaintiff was not passively permitting the defendant to utilize the ICAI acronym. Reliance was placed on Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia where it was held that delay cannot be considered as a barrier to redress in a case of obvious infringement.
The defendant’s reliance on Section 30(1) of the Trademarks Act was held to be clearly misguided. As the plaintiff's counsel properly noted, section 30(1) applies only when the defendant utilizes the plaintiff's registered trademark to identify its goods or services as those of the plaintiff. The defendant did not argue that it was identifying its services as those of the plaintiff by utilizing the disputed ICAI acronym. Thus, the first requirement of Section 30(1) was not satisfied.
Judgment:
The Court granted the motion for interlocutory injunction since Section 30(1) did not apply and this case fit within the meaning of Section 29(2)(c) read with Section 29(3) of the Trademarks Act. It did not address passing off because it issued the interlocutory injunction for infringement.
The defendant and its representatives were restrained from using ICAI as an acronym for their institution or services. The defendant was given three months to remove the abbreviation ICAI, as referring to the defendant, from all physical and virtual media/websites where it had a presence, including all internet and social media platforms.
I.A. 7230/2021 was allowed. CS(COMM) 271/2021 was scheduled to be heard by the learned Joint Registrar (Judicial) on 13th April 2023 for admission and denial of documents and marking of exhibits, followed by a case management hearing and further proceedings.
Case: The Institute of Chartered Accountants of India vs The Institute of Cost Accountants of India
Citation: CS(COMM) 271/2021
Bench: Justice C. Hari Shankar
Advocates for Plaintiff: Mr. Chander M. Lall, Sr. Adv. with Ms. Nancy Roy, Ms. Aastha Kakkar, Mr. Prashant, Ms. Nida Khanam, Ms. Ananya Chugh, and Ms. Renuka Rajan, Advs.
Advocates for Defendant: Mr. Sandeep Sethi, Sr. Adv. with Mr. Munish Mehra, Ms. Shreya Sethi, Mr. Vikram Singh Dalal, and Ms. Tanvi Tewari, Advs.
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