In a noteworthy ruling, the Delhi High Court has prohibited the Institute of Cost Accountants of India from using the acronym “ICAI,” which is a trademark registered in favor of the Institute of Chartered Accountants of India, for any of its services or institution.
The Single Bench of the court also instructed the Institute of Cost Accountants of India to eliminate the ICAI acronym from all existing physical and virtual representations, including web pages, within three months.
The verdict was pronounced after the Institute of Chartered Accountants of India filed a suit, requesting an injunction against the Institute of Cost Accountants of India for using the ICAI mark. The Institute of Chartered Accountants of India argued that the ICAI mark was registered in its name for “Education and Providing of Training” in Class 41, and the Institute of Cost Accountants of India was involved in the same activities, but exclusively for Cost Accountants.
Chander Lall, Counsel for the plaintiff submitted that, thus, the plaintiff has, over the defendant, the advantage of both priority of registration as well as priority of use of the ICAI acronym. He also contended that the defendant is, by using the impugned acronym ICAI, guilty of passing off its services as those of the plaintiff.
Munish Mehra, for the defendant had initially sought to contend that the suit is not only bad on the ground of delay but is also hit by the principle of acquiescence as, in his submission, the plaintiff has acquiesced to the use, by the defendant, of the impugned ICAI mark. He went on to emphasize the equities of the situation, by submitting that the very change of nomenclature of the defendant institution from the Institute of Cost and Works Accountants of India to the Institute of Cost Accountants of India took place consequent to communications addressed by the plaintiff to the MCA.
The court noted that the use of the “ICAI” mark by the Institute of Cost Accountants of India could lead to confusion among the public, and there was a likelihood of initial interest confusion under Section 29(3) of the Trade Marks Act.
The court further stated that if the defendant were to use its full name, “Institute of Cost Accountants,” instead of ICAI, and a member of the public were still to be confused, that confusion would not be attributable to the defendant but to the person who couldn’t distinguish between “Cost Accountant” and “Chartered Accountant.”
The court observed that it was impossible to determine whether the use of the ICAI acronym referred to the Institute of Chartered Accountants of India or the Institute of Cost Accountants of India without additional evidence. It concluded that the defendant had prima facie infringed on the Institute of Chartered Accountants of India’s trademark by using the ICAI acronym to designate its institution.
The Delhi High Court Bench of Justice C Hari Shankar thereby restrained the Institute of Cost Accountants of India from using the ICAI acronym and has directed it to remove the acronym from all existing representations within three months. The ruling has been made in favor of the Institute of Chartered Accountants of India, which argued that the ICAI mark was registered in its name and the use of the mark by the Institute of Cost Accountants of India could lead to confusion among the public.
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