Delhi HC restrains Institute of Cost Accountants of India from using ICAI acronym

The Delhi High Court has prohibited the Institute of Cost Accountants of India from using the term ICAI after the Institute of Chartered Accountants of India moved a trademark infringement complaint.

In its March 21 interim order, a single-judge bench led by Justice C Hari Shankar gave the defendant, the Institute of Cost Accountants of India, three months to take steps to ensure that the acronym ICAI is removed from all physical and virtual media/websites where the defendant has a presence, which would include all websites on the internet as well as all social media platforms.

Examining whether “confusion” could arise in the minds of the public with respect to the acronym, Justice Shankar proceeded to analyse by way of an example pertaining to chartered accountants. “One may, hypothetically, envisage a situation in which a notice inviting applications for membership of the defendant is issued in the media, denoting the defendant as ICAI. A chartered accountant who wishes to join the plaintiff institute submits an application, believing the notice to be about the plaintiff.

That such a possibility could arise is ex facie obvious,” the high court said. “The chartered accountant may be made aware of the fact that the notice has been issued, not by the plaintiff, but by the defendant, immediately upon contacting the concerned person, possibly even before application.” The chartered accountant, having been disabused of his mistaken impression, does not apply. Even so, as the chartered account was initially confused, by the notice having been issued by the defendant using the ICAI acronym, the element of initial interest confusion stands satisfied,” the court added.

“That, before he could proceed further, the chartered accountant was made aware of the fact that the notice was actually pertaining to the defendant, and not the plaintiff, does not wipe out, or efface, the confusion that had taken place, solely on account of the use, by the defendant, of the ICAI acronym. That, by itself, suffices as ‘confusion’ within the meaning of Section 29(2) of the Trade Marks Act,” the high court said.

The court said that it was impossible, without additional material, to state whether the reference to ICAI, in respect of the educational and training services under the Act, refers to the plaintiff Institute of Chartered Accountants or the defendant 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,” the high court said.