The Delhi High Court has prohibited the Institute of Cost Accountants of India from using the term ICAI after the Institute of Chartered Accountants of India filed a Trademark Infringement Suit.
The single-judge bench of Justice C Hari Shankar gave the Institute of Cost Accountants of India, three months to take steps to ensure that the acronym ICAI is removed from all physical and virtual media/websites where the defendant has a presence, which would include all websites on the internet as well as all social media platforms.
Brief Facts of the Case
The wordmark ICAI, being an abbreviation of ―Institute of Chartered Accountants of India‖ stands registered in favour of the plaintiff from 25th March 2011 in Class 41 of the Nice Classification, which pertains to ―Education and Providing of Training. The defendant, the Institute of Cost Accountants of India is engaged in the very same activity, the only difference being that the plaintiff classically caters to Chartered Accountants, whereas the defendant is the Institute of Cost Accountants.
The plaintiff claims user, of the ICAI mark, since 1949. The defendant, on the other hand, was rechristened as the Institute of Cost Accountants of only in 2012. Prior thereto, since 1959, the defendant was functioning as the Institute of Cost and Works Accountants of India (ICWAI).
The defendant sought, from the Ministry of Corporate Affairs, a change of its name from the Institute of Cost and Works Accountants of India to the Institute of Cost and Management Accountants of India. The proposal was opposed by the plaintiff who addressed various communications to the MCA, proposing that a more appropriate appellation to describe the defendant would be the ―Institute of Cost Accountants of India.
It was consequent to these missives from the plaintiff that the MCA changed the name of the defendant institution from The Institute of Cost and Works Accountants of India to The Institute of Cost Accountants of India, with effect from 1 st February 2012. Consequent thereon, the defendant adopted the acronym ICAI, which is, admittedly, identical to the plaintiff‘s ICAI acronym, as an abbreviation of its title, with effect from 2012, from which date the defendant claims user of the said acronym.
High Court's Observation
The Court took to task, the examination of as to whether “confusion” could arise in the minds of the public with respect to the acronym, Justice Shankar proceeded to analyze by way of an example pertaining to chartered accountants.
It noted that it is ex-facie obvious that confusion could arise with regard to the two institutes.
“One may, hypothetically, envisage a situation in which a notice inviting applications for membership of the defendant is issued in the media, denoting the defendant as ICAI. A chartered accountant who wishes to join the plaintiff institute submits an application, believing the notice to be about the plaintiff. That such a possibility could arise is ex facie obvious,” the court said.
It went on to confirm that the element of confusion stands satisfied.
“The chartered accountant may be made aware of the fact that the notice has been issued, not by the plaintiff, but by the defendant, immediately upon contacting the concerned person, possibly even before application.” The chartered accountant, having been disabused of his mistaken impression, does not apply. Even so, as the chartered account was initially confused, by the notice having been issued by the defendant using the ICAI acronym, the element of initial interest confusion stands satisfied,” the court added.
“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 Trade Marks Act,”
The Court remarked that the likelihood of confusion on the part of the public is, therefore, a statutorily presumed incidence of the conjoint operation of the identity of the marks and the identity of the goods and services covered by the mark, and the confusion may arise in various circumstances and on account of various forms of usage.
"It is obvious, given the fact that the plaintiff and the defendant are using the identical marks, i.e., ICAI, in respect of identical services, namely the imparting of education and providing of training, that, in the absence of any other distinguishing feature, the marks by themselves are bound to create confusion in the perception of the observer who observes them."
"It is impossible, without additional material, to divine whether the reference to ICAI, in respect of educational and training services in Class 12 of the NICE classification, refers to the plaintiff Institute of Chartered Accountants or the defendant Institute of Cost Accountants. It is this reality which finds statutory enunciation in Section 29(3) of the Trade Marks Act", it added.
Noting that where the mark by itself is confusing, the possibility of removing the confusion by adding additional material, or providing additional information, does not detract from the applicability of Section 29(2)(c) read with Section 29(3), the Court cited Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories [1964] INSC 228 (20 October 1964). It thus concluded that a clear prima facie case of infringement, by the usage, by the defendant, of the impugned ICAI acronym, to designate its institution is made out.
CASE TITLE: The Institute of Chartered Accountants of India vs Institute of Cost Accountants of India
CASE DETAILS: CS(COMM) 271/2021
CORAM: 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 Defendants: 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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