The Delhi High Court has restrained the Institute of Cost Accountants of India from using the acronym ICAI after the Institute of Chartered Accountants of India moved a trademark infringement lawsuit.
A single-judge bench of Justice C Hari Shankar in its March 21 interim order gave three months to the defendant, Institute of Cost Accountants of India, 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 its social media platforms.
The plaintiff, Institute of Chartered Accountants of India, said that the work mark ICAI has been registered by them since March 25, 2011, under class 41 which pertains to ‘Education and Providing of Training’, however, it has been using the mark since 1949. It was claimed that the defendant was previously functioning as the Institute of Cost and Works Accountants of India and is engaged in the same activity except that it is concerned with cost accountants.
Examining whether “confusion” could arise in the minds of the public with respect to the acronym, Justice Shankar proceeded to analyse by way of an example pertaining to chartered accountants. “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 desires to become a member of the plaintiff institute, proceeds to apply for membership, believing the notice to pertain to the plaintiff. That such a possibility could arise is ex facie obvious,” the high court said. “Immediately on contacting the concerned person, perhaps even before application, the chartered accountant may be made aware of the fact that the notice has been issued, not by the plaintiff, but by the defendant. The chartered accountant, thus disabused of the erroneous impression he had, 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 high court said.
The court said that it was impossible, without additional material, to state whether the reference to ICAI, in respect of the educational and training services under the Act, refers to the plaintiff Institute of Chartered Accountants or the defendant Institute of Cost Accountants. “There is, therefore, a clear prima facie case of infringement, by the usage, by the defendant, of the impugned ICAI acronym, to designate its institution,” the high court said.
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