The Delhi High Court has restrained Institute Of Cost Accountants Of India from using “ICAI” acronym, a trademark which stands registered in favour of Institute of Chartered Accountants of India, for the institution or services provided by it.
Justice C Hari Shankar also directed Institute Of Cost Accountants Of India to remove ICAI acronym from all existing web pages and other physical or virtual representations in which it is used, within three months.
The court was hearing a suit filed by Institute of Chartered Accountants of India seeking an injunction against Institute of Cost Accountants of India from using the ICAI mark.
It was the case of Institute of Chartered Accountants of India that the mark ICAI was registered in its favour in Class 41 relating to “Education and Providing of Training.” It was stated that Institute Of Cost Accountants Of India is engaged in same activity, except that it is concerned with Cost Accountants whereas Institute of Chartered Accountants of India related to Chartered Accountants.
Justice Shankar observed that there is, prima facie, likelihood of confusion on the part of public regarding the use of ICAI mark by the Institute Of Cost Accountants Of India in view of section 29(3) read with section 29(2)(c) of the Trade Marks Act.
Observing that the ‘initial interest confusion’ must occur as a result of the use of infringing mark by the defendant, the court said:
“If, for example, the defendant, in the present case, were to use its full title ―Institute of Cost Accountants, instead of ICAI, and, nonetheless, a member of the public were to be confused because he, at that point, confused ―Cost Accountant with ―Chartered Accountant, that confusion would obviously be attributable, not to the defendant, but to the gentleman who couldn‘t distinguish Tweedledum from Tweedledee.”
The court added that it is impossible, without additional material, to decide whether the reference to ICAI in respect of educational and training services refers to Institute of Chartered Accountants or the 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,” it said.
Case Title: THE INSTITUTE OF CHARTERED ACCOUNTANTS OF INDIA v. THE INSTITUTE OF COST ACCOUNTANTS OF INDIA
Source from: https://www.livelaw.in/news-updates/delhi-high-court-restrains-institute-of-cost-accountants-of-india-icai-acronym-224881