THE INSTITUTE OF CHARTERED ACCOUNTANTS OF INDIA ….Plaintiff
Versus
THE INSTITUTE OF COST ACCOUNTANTS OF INDIA .. Defendant
Date of Order:- 21.03.2023
The plaintiff was, The Institute of Chartered Accountants of India acronym(ICAI).
The defendant was The Institute of Cost Accountants of India, acronym (ICAI).
TRADEMARK INVOLVED
Plaintiff submits that its user is since 1949 and plaintiff’s trademark is registered in class 41 with effect from 25th March, 2011 in Education and Providing of Training.
Defendant is has started using ICAI since 2012, Prior thereto, since 1959, the defendant was functioning as the Institute of Cost and Works Accountants of India (ICWAI).
Delhi High Court said that this case is practically a case of res ipsa loquitur. The plaintiff and the defendant are using identical acronyms, i.e., ICAI. The case, therefore, squarely falls within the ambit of Section 29(2)(c) of the Trade Marks Act and, therefore, also brings into operation Section 29(3). Section 29(3), read with Section 29(2)(c) clearly ordains that where the trademarks of the plaintiff and the defendant are the same, and the goods or services covered by the marks are also identical, the Court shall presumed, likelihood of confusion on the part of the public.
The present case, therefore, justified prima facie finding of likelihood of confusion on the part of the public, by the use, by the defendant, of the impugned ICAI mark, by operation of Section 29(3) read with Section 29(2)(c) of the Trade Marks Act.
High Court observed, that what matters, fundamentally, is the initial impression that the defendant‘s mark conveys to the viewer. If that impression is confusing, infringement must be held to have taken place. That, even shortly thereafter, the viewer being disabused of the said initial Impression, is irrelevant. If, therefore, because of the use of the impugned mark by the defendant, the initial interest of the person viewing the mark is kindled, the mark is infringing in nature.
Court said, It is therefore, well settled that, in order to assess infringement, one has to proceed on the basis of the effect of the mark of the defendant from the point of view of initial interest of the consumer who uses the mark. This also serves to underscore the point that it is not necessary that the confusion, arising out of initial interest, persists.
Initial interest confusion permeates both infringement and passing off.
For Infringement
Initial interest confusion must occur as a result of the use, by the defendant, of the infringing mark.
Where, however, the confusion arises because of the use of the ICAI
mark as denoting the defendant, the intellectual property right of the
plaintiff would stand infringed, and the defendant may, subject to
satisfaction of other indicia of the tort, also be guilty of passing off its
service as that of the plaintiff.
Court said, 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, 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.
Court said, therefore, 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.
Application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 for Injunctive reliefs was allowed and defendant Institute of Cost Accountants was restrained from using ICAI as an acronym for its institution or for the services provided by it.
Date of Post:- 25.09.2023
Place :- New Delhi
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