The Madras High Court dismissed CA ’s plea seeking to direct the Institute of Cost Accountants of India to use the acronym ‘ICOAI’ instead of ‘ICAI’.
The petition filed by the appellant V Venkata Siva Kumar, CA sought to forbear the Institute of Cost Accountants of India (ICOAI) from using the acronym ‘ICAI’ (Institute of Chartered Accountants of India) for professional opportunities earmarked for them.
The petitioner alleged that the Institute of Cost Accountants had with a mala fide and fraudulent intention to usurp the goodwill of ICAI built over 70 years, suddenly without any legal sanction, began representing to the stakeholders using the acronym ‘ICAI’.
He further alleged that this deliberate misrepresentation is further compounded by the periodical releasing of various news items to the media representing ICAI council members and causing great confusion in the minds of the public, government, and other stakeholders.
The statutory rights of the Institute of Chartered Accountants of India are being violated by the Institute of Cost Accountants of India is founded on two planks.
Firstly, Sections 15-A and 24-A of the CA Act prohibit a person from using a name or common seal which is identical with or so nearly resembles that of the CA Institute as to deceive or be likely to deceive the public. It is evident from the language of Section 24-A of the CA Act that the protection is extended to the name and nomenclature.
The division bench headed by the Chief Justice A.P. Sahi rejected the first plank and held that no case is made out for the exercise of discretionary jurisdiction by this Court on account of the use of the acronym ICAI.
Secondly, the Trade Marks Act enables the registered proprietor of a trademark to sue for infringement. Even with regard to an unregistered trademark, it recognizes the right of the proprietor to initiate an action for passing off under common law.
“Needless to say, an action for infringement or passing off should be initiated by the registered proprietor or proprietor, respectively, of the trademark. In other words, the Appellant herein would not have the locus standi to initiate either an action for infringement or passing off. Once again, we find no infirmity in the conclusion in the impugned order on this issue,” the bench said.
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