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2006 Supreme(Del) 1283

High Court Of Delhi
MANJU GOEL
ASSOCIATION FOR INVESTMENT MANAGEMENT AND RESEARCH - Appellant
Versus
INSTITUTE OF CHARTERED FINANCIAL ANALYSTS OF INDIA - Respondents
CS (OS) 210 Of 2004
Decided On : 08/04/2006

Advocates Appeared:
BHAGABATI PRASAD, LATA R.NAIR, P.NIRUP, RAJENDRA KUMAR, RUCHIKA SETH, SANJAY JAIN, SUDHIR CHANDRA

The defendants had used the marks under a license from the plaintiffs, but the license was revoked in 1997. The court found that the plaintiffs had a prima facie case, the balance of convenience lay in their favor, and they would suffer irreparable loss if the injunction was not granted.

Headnote:

TRADEMARK - INJUNCTION - [CFA, Chartered Financial Analyst, The Institute of Chartered Financial Analysts of India, ICFA, ICFAI] - The Trade Marks Act, 1999, The Code of Civil Procedure, 1908 - The defendants were restrained from using the trademarks or service marks CFA, Chartered Financial Analyst, The Institute of Chartered Financial Analysts of India, ICFA and ICFAI or any other name or mark which may be identical or deceptively similar to these marks and from passing off their programmes or business as that of the plaintiffs.

Fact of the Case:

The plaintiffs sought to restrain the defendants from using their trademarks or service marks CFA, Chartered Financial Analyst, The Institute of Chartered Financial Analysts of India, ICFA, and ICFAI, alleging that the defendants' programmes or business were being passed off as that of the plaintiffs. The plaintiffs claimed that the defendants' use of the marks had caused confusion among investment professionals and sought a permanent injunction.

Finding of the Court:

The court found that the defendants had used the marks under a license from the plaintiffs, but the license was revoked in 1997. The court held that the plaintiffs had a prima facie case and that the balance of convenience lay in their favor. It also found that the plaintiffs would suffer irreparable loss if the injunction was not granted, as their reputation and exclusive rights to the marks would be damaged.

Issues: The main issues were whether the defendants were entitled to use the trademarks and service marks, and whether the plaintiffs would suffer irreparable loss if the injunction was not granted.

Ratio Decidendi: The court held that the defendants had used the marks under a license from the plaintiffs, but the license was revoked in 1997. It found that the plaintiffs had a prima facie case, the balance of convenience lay in their favor, and they would suffer irreparable loss if the injunction was not granted.

Final Decision: The court allowed the application and restrained the defendants from using the trademarks or service marks CFA, Chartered Financial Analyst, The Institute of Chartered Financial Analysts of India, ICFA, and ICFAI or any other name or mark which may be identical or deceptively similar to these marks and from passing off their programmes or business as that of the plaintiffs.


MANJU GOEL, J.

( 1 ) THIS order is to decide an application for interim injunction to restrain the defendants from using the trademarks or the service marks or trade names CFA, Chartered Financial Analyst, The Institute of Chartered Financial Analysts of India, ICFA and ICFAI or any other name or mark which may be identical or deceptively similar to these marks and from passing off the defendants' programmes or business as that of the plaintiffs. Plaintiff No. 1, Association of Investment Management and Research, is a Virginia non-stock corporation with headquarters at 5 Boar's Head Lane, Charlottesville, Virginia, USA having been incorporated in 1986. Plaintiff No. 2, The Institute of Chartered Financial Analysts (ICFA), is a subsidiary of plaintiff No. 1 with its registered office at 3668, Charlottesville, Virginia, USA. Plaintiff No. 2 was incorporated in 1962 to (a) administer the Chartered Financial Analyst (CFA) examination; (b) award Chartered Financial Analyst (CFA) charter; and (c) grant the right to use the Chartered Financial Analyst and CFA marks to successful candidates thereof. The case of the plaintiffs

( 2 ) THE case of the plaintiffs as made out in the plaint can be stated briefly as under: the plaintiffs started their business with the aim to serve their members and investors as global leaders in educating and conducting examination for investment professionals and sustaining high standard of professional conduct. For accomplishing this objective the plaintiffs formed several affiliations, reciprocal relationships and joint efforts with investment associations and investment professionals around the world. Plaintiff No. 1 has a membership of more than 70,000 investment professionals including more than 27,000 CFA charter holders and 40,000 CFA candidates spread over the several countries of the world. A number of Asian and European investment professionals have enrolled in the CFA programme and are seeking the right to use the CFA mark. In India the plaintiffs have 82 candidates and two exams sites. Plaintiff No. 2 is the proprietor of the trademarks mentioned above which are registered in USA, Canada and other countries. The right to use the marks 'cfa' and the 'chartered Financial Analyst' is granted by plaintiff No. 2 to investment professionals world-wide who have earned and continue to meet their requirements of a CFA charter holder. A series of three rigorous examinations is administered by the plaintiffs to candidates aspiring to become a CFA charter holder. These exams test the candidate's understanding of a global body of knowledge with emphasis on, inter alia, ethics, financial accounting, quantitative analysis, economics, fixed income, security analysis, equity and portfolio management. The employers and clients can expect a CFA charter holder to have a high level of understanding of these fundamental principles. In addition these candidates are required to have three years of qualifying work experience in the investment industry. The CFA candidates and charter holder are required to adhere, throughout, most stringent professional standard in the investment industry and must attest to such adherence in writing each year or have their right to use these Charter Financial Analyst and CFA marks revoked. The marks have become symbols of integrity and professional excellence in the investment profession. Defendant No. 1, The Institute of Chartered Financial Analysts of India, Road No. 3, Banjara Hills, Hyderabad-500034 was established in Hyderabad in October, 1984 as a non-profit educational society with the purpose of training qualified individuals to become investment professionals. They were previously known as 'institute of Certified Financial Analysts of India. They changed their name to Institute of Chartered Financial Analysts of India after agreeing to obtain a license from plaintiff No. 2 in 1985. The function of defendant No. 2 is also to award the CFA charters to successful candidates of CFA































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