In a recent ruling, the Delhi High Court has restrained the Institute Of Cost Accountants Of India from using the “ICAI” acronym, which is a registered trademark of the Institute of Chartered Accountants of India. The ruling comes after a suit was filed by the latter seeking an injunction against the Institute Of Cost Accountants Of India from using the ICAI mark.
The ICAI Mark
The mark ICAI was registered in the name of the Institute of Chartered Accountants of India in Class 41 relating to “Education and Providing of Training.” On the other hand, it was argued that the Institute Of Cost Accountants Of India is engaged in the same activity, except that it is concerned with Cost Accountants, whereas the Institute of Chartered Accountants of India is related to Chartered Accountants.
The Court’s Observations
Hon’ble Justice C Hari Shankar observed that there is a prima facie likelihood of confusion on the part of the 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.
The court noted that “initial interest confusion” must occur as a result of the use of infringing mark by the defendant. For instance, if the defendant were to use its full title “Institute of Cost Accountants” instead of ICAI, and a member of the public were to be confused, it would be attributable to the individual who couldn’t distinguish between Cost Accountant and Chartered Accountant.
The court added that without additional material, it is impossible to decide whether the reference to ICAI in respect of educational and training services refers to the Institute of Chartered Accountants or the Institute of Cost Accountants. Therefore, there is a prima facie case of infringement by the usage of the impugned ICAI acronym to designate the institution.
Delhi High Court Judgement (dated 21/03/2023)
ICAI Announcement dated 28/03/2023
Restraint order against Institute of Cost Accountants of India
The Hon’ble High Court of Delhi’s judgement dated 21.03.2023 restrained the Institute of Cost Accountants of India from using “ICAI” as an acronym for its institution or services in a civil suit filed by the Institute of Chartered Accountants of India (ICAI) for trademark infringement. The Hon’ble High Court also ordered the Institute of Cost Accountants of India to remove the acronym “ICAI” from all physical and virtual media/websites, including all Internet and social media platforms, within three months. The High Court granted the Institute of Chartered Accountants of India’s interlocutory injunction request because the Institute of Cost Accountants of India’s use of the “ICAI” acronym constitutes a clear prima facie case of infringement under Section 29(2)(c) read with Section 29(3) of the Trademarks Act, 1999.
The Delhi High Court’s decision to restrain the Institute Of Cost Accountants Of India from using the ICAI acronym is an important one for trademark law in India. It reaffirms the principle that a registered trademark enjoys protection, and the usage of an identical or similar mark by another entity in the same or similar field of activity can lead to confusion and infringe upon the rights of the registered owner. This ruling is likely to have a significant impact on how trademarks are protected in India, particularly with regards to educational and training services.
It is the first case of its kind in which a statutory body, such as the Institute of Cost Accountants of India, has been barred from infringing on the trademark of an acronym, such as ICAI of the Institute of Chartered Accountants of India. Unbelievable!