TMI Blog2020 (8) TMI 217X X X X Extracts X X X X X X X X Extracts X X X X ..... eedings to protect its interest - Neither the party-in-person nor the third Respondent have pleaded nor raised any contention to the effect that the third Respondent was disabled for some valid reasons from initiating proceedings in order to protect its rights and interests. A fortiori, a discretionary public law action cannot be maintained in this situation. Therefore, we concur fully with the findings of the learned Judge in the impugned order that the Appellant/Petitioner does not have locus standi and that the writ petition was not maintainable at his instance. The second plank on which the Appellant's case rests is that the third Respondent obtained a trade mark registration for the acronym ICAI and that consequently, the third Respondent is entitled to restrain the use of the acronym ICAI by the first Respondent. The Trade Marks Act enables the registered proprietor of a trade mark to sue for infringement. Even with regard to an unregistered trade mark, it recognizes the right of the proprietor to initiate an action for passing off under common law - By letter dated 17.06.2020, the Ministry of Corporate Affairs had advised the first Respondent that it is not desirable ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... management accountancy. Several representations were made by the first Respondent to the second Respondent requesting for a change of name and, in particular, for the deletion of the capitalized word Works from the name and the replacement thereof with the capitalized word Management . During this period, the first Respondent used the acronym ICWAI. Eventually, the Cost and Works Accountants (Amendment) Act, 2011 was enacted, whereby the name of the first Respondent was changed to the Institute of Cost Accountants of India. Upon such change of name, the first Respondent began using the acronym ICAI, which represents the first alphabets of the words (excluding the preposition of ) in its changed name. The usage of the acronym ICAI by the first Respondent, which is the acronym in use by the third Respondent from inception, is the bone of contention in the present proceeding. 3. According to the Petitioner, the first Respondent is not entitled to use the acronym ICAI as such usage would deceive members of the public and lead them to believe that the first Respondent and the third Respondent are the same entity. The writ petition to restrain such use and to direct the first Res ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e use of the acronym ICAI. By letter dated 17.06.2020, the Ministry of Corporate Affairs had advised the first Respondent that it is not desirable for the first Respondent to use the acronym ICAI. By relying upon this document, the party-in-person contended that the Ministry of Corporate Affairs was also of the view that the first Respondent should desist from using the acronym ICAI. 8. Mr.AR.L.Sundaresan, the learned senior counsel made submissions in response and to the contrary on behalf of the first Respondent. His first contention was that the Appellant does not have the locus standi to maintain the writ petition in as much as he is not the aggrieved person. In other words, a proceeding of this nature can only be instituted by the third Respondent and this appeal is liable to be rejected in limine on this ground. The second contention of the learned senior counsel was that the name of the first Respondent was amended by an Act of Parliament, namely, the Cost and Works Accountants (Amendment) Act 2011, whereby the name was changed to the Institute of Cost Accountants of India. Upon such statutory change of name, the first Respondent began using the acronym ICAI as it represe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... is likely to deceive the public. His next contention was that the acronym ICAI was registered as a trade mark under the Trade Marks Act by Certificate of Registration of Trade Mark dated 11.09.2016. Consequently, the use of the acronym ICAI by the first Respondent infringes the Trade Mark of the third Respondent as per Section 29 of the Trade Marks Act. For the above reasons, the learned counsel submitted that the present proceeding is maintainable as it pertains to the violation of statutory provisions by the first Respondent and that the existence of an alternative remedy is not material in such event. 10. We considered the submissions of the learned senior counsel/ counsel for the respective parties and examined the records. 11. The first question that is required to be considered is whether the Appellant/Petitioner had the locus standi to maintain the writ petition. In the impugned order, the learned Judge concluded that the Petitioner is not the person aggrieved and that, therefore, the Petitioner is not entitled to maintain the writ petition. The learned Judge also held that the rights in a trade mark are proprietary rights and that only the owner of the trade mar ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ve 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 name of the first Respondent as per the CA Act is the Institute of Chartered Accountants of India. Thus, from the perspective of alleged violation of the CA Act, the name of the third Respondent, as per the CA Act, and that of the first Respondent, i.e. the Institute of Cost Accountants of India, are not identical. In any event, Section 28 of the CA Act enables prosecution only on a complaint made by the Council of the CA Institute or the Central Government for the violation of provisions such as Section 24A. In these circumstances, no case is made out for the exercise of discretionary jurisdiction by this Court on account of the use of the acronym ICAI. Such question would have to be decided in appropriate legal proceedings initiated by the third Respondent. 13.The second plank on which the Appellant's case rests is that the third Respondent obtained a trade mark registration for the acronym ICAI and that consequently, the third Respondent is entitled to restrain the use of the acronym ICAI by the first Respondent. The Trade Marks Ac ..... X X X X Extracts X X X X X X X X Extracts X X X X
|
