In a recent decision by the Delhi High Court, the Institute of Chartered Accountants of India (ICAI) emerged victorious in a trademark dispute against the Institute of Cost Accountants of India. The crux of the matter revolved around the use of the ICAI acronym by both institutes, with the Institute of Chartered Accountants claiming primacy of registration and priority of use. The defendant countered by invoking the doctrines of laches and acquiescence, arguing that the plaintiff had consented to their use of the ICAI mark. Our IP experts Ipshita Bhattacharyya and Shuchita S delve into the details of the case and the court’s decision in this comprehensive case brief.
Facts:
The Institute of Chartered Accountants of India filed a suit for an injunction against the Institute of Cost Accountants of India for using the ICAI trademark. The Institute of Chartered Accountants of India argued that the ICAI mark was registered in its name for “Education and Training” in Class 41, whereas the Institute of Cost Accountants of India engaged in the same activities, but only for Cost Accountants.
Contentions of the Plaintiff and Defendant:
It was argued that, therefore, the plaintiff has primacy of registration and priority of use of the ICAI acronym over the defendant. In addition, it was also contended that the defendant is culpable of passing off its services as those of the plaintiff by using the disputed acronym ICAI.
The Counsel for the defendant, had argued that the suit is not only barred by the doctrine of laches, but also by the doctrine of acquiescence, since, the plaintiff has consented to the defendant’s use of the infringed ICAI mark. He went on to emphasise the fairness of the situation by arguing that the change of the defendant institution’s name from the Institute of Cost and Works Accountants of India to the Institute of Cost Accountants of India was a direct result of the plaintiff’s collaboration with the MCA.
Decision:
The court noted that the Institute of Cost Accountants of India’s use of the “ICAI” mark could contribute to consumer confusion and that there was a likelihood of initial interest confusion under Section 29(3) of the Trade Marks Act.
The court added that if the defendant were to use its full name, “Institute of Cost Accountants,” instead of ICAI, and a member of the public was still confused, the confusion would not be attributable to the defendant, but rather to the person who could not differentiate between “Cost Accountant” and “Chartered Accountant.”
The court noted that without additional evidence, it was impossible to determine whether the acronym ICAI referred to the Institute of Chartered Accountants of India or the Institute of Cost Accountants of India. It was determined that the defendant had violated the trademark of the Institute of Chartered Accountants of India by using the acronym ICAI to designate its institution. The bench of Justice C Hari Shankar of the Delhi High Court enjoined the Institute of Cost Accountants of India from using the ICAI acronym and ordered it to remove the acronym from all extant representations within three months. The court sided with the Institute of Chartered Accountants of India, which argued that the ICAI mark was registered in its name and that the Institute of Cost Accountants of India’s use of the mark could cause public confusion.
Authored by: Ipshita Bhattacharyya (Associate BananaIP Counsels), and Shuchita S (Intern)
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