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IN THE HIGH COURT OF DELHI AT NEW DELHI
V. Kameswar Rao, J.
Cfa Institute - Appellant
Versus
Brickwork Finance Academy - Respondent
Civil Suit (Comm) No. 619 of 2018; Interlocutory Application No. 2460 of 2018, 14173 of 2018
Decided On : 06-10-2020
In a trademark infringement and passing off case, the Delhi High Court held that the defendant's mark 'BFA' was not deceptively similar to the plaintiff's mark 'CFA' and dismissed the plaintiff's application for an injunction.
Fact of the Case:
The plaintiff, a non-profit organization, offered a nine-month weekend program in Finance for Graduates, Post Graduates and Working Professionals looking for an enriching career in Finance that is recognised by Brickwork Ratings, a SEBI registered Credit Rating Agency, accredited by RBI and empaneled by NSIC. The course covered areas in Finance namely, Credit Management, Investment Management and Risk Management. This course has been termed as ''Banking and Financial Analyst'' by the defendant and is also referred to as the BFA program. While perusing the defendant's website, the plaintiff noted that the website bears reference to the plaintiff's ''CFA'' program at several places. In fact, the defendant offers a dual program, and in the description of the same the defendant explicitly stated that candidates with CFA are preferred. In addition, some of the faculty teaching the BFA course claimed to hold the CFA certification. Even a number of students enrolled in the defendant's BFA program were appearing for CFA examinations, as reflected on the student profiles uploaded on the defendant's website. The multiple references to the plaintiff's ''CFA'' mark and the stark similarities in the programs offered attested to the fact that the defendant recognizes the reputation of the plaintiffs CFA program.
Finding of the Court:
The Court held that the marks 'CFA' and 'BFA' were not deceptively similar as the first alphabet/syllable being 'C' and 'B', are not similar/common and the marks 'CFA' and 'BFA' start with distinct dissimilarity. Owing to this dissimilarity, the Court was of the view that the first syllable/alphabet is different/dissimilar, making it visually and phonetically dissimilar. Although phonetic and visual similarities are disjunctive and not conjunctive tests, the Court held that the both the tests are not satisfied by the impugned mark.
Issues: Whether the defendant's mark 'BFA' was deceptively similar to the plaintiff's mark 'CFA' and whether the defendant's use of the mark 'BFA' amounted to passing off.
Ratio Decidendi: The Court applied the principles of deceptive similarity and passing off to determine whether the defendant's mark 'BFA' was infringing the plaintiff's mark 'CFA'. The Court held that the marks were not deceptively similar as they were visually and phonetically dissimilar. The Court also held that the defendant's use of the mark 'BFA' did not amount to passing off as the class of customers who would be enrolling for the respective programmes offered by the parties herein were capable of differentiating between the two programs.
Final Decision: The Court dismissed the plaintiff's application for an injunction and also dismissed the defendant's application for summary judgment.
JUDGMENT
V. Kameswar Rao, J. - I.As. 2460/2018 and 14173/2018
1. By this order I shall decide two applications bearing I.A. 2460/2018 filed by the plaintiff under Order XXXIX Rule 1 and 2 read with Section 151 of CPC as well as I.A. 14173/2018 filed by the defendant under order XIIIA read with Section 151 of CPC seeking a summary judgment against the plaintiff.
2. The suit has been filed by the plaintiff for permanent injunction against the defendant and its agents from infringing its trade marks, passing off, unfair trade practice, delivery-up of materials/products, damages as well as to declare the plaintiff''s mark as a well-known trade mark.
3. It is averred that the plaintiff is a non-stock corporation incorporated under the laws of the Commonwealth of Virginia, USA having its registered office at 915 East High Street, Charlottesville, VA 22902 United States of America. It was established to serve as a global membership organization of financial analysts, portfolio and investment manager and other similar investment professionals, educators and supervisors thereof (hereinafter, "the Investment Professionals").
4. It is the case of the plaintiff, it first conducted in India the CFA examination in 1981. It is also stated that the plaintiff is the successor-in-title and interest to the Institute of Chartered Financial Analysts (ICFA) that was founded in 1959 by the Financial Analysts Federation (FAF) that was incorporated in 1962 in Charlottesville, Virginia, USA with the objective of developing and administering a certification program for investment professionals, where under qualified candidates who pass three levels of examinations and meet other experience and professional standards requirements are awarded the right to use the Chartered Financial Analyst or CFA designation. Established in 1986 under the name Financial Analysts Programs, the plaintiff changed its name to Association for Investment Management and Research (AIMR) in 1990. In 1990, ICFA and FAF combined and became subsidiaries of the plaintiff. The plaintiff then entered into a co-operative operating agreement with ICFA and FAF, where under the plaintiff was granted the exclusive license to administer the CFA certification program worldwide, including in India. With effect from June 1, 1999, ICFA merged with and into the plaintiff and, by virtue of the said merger, all properties owned by ICFA or any proceedings pending by or against ICFA were deemed to have been transferred to, vested in, and to be continued by the plaintiff. With effect from May 2004, the plaintiff underwent a further change of name to ''CFA Institute'' which is the current name under which it is known today.
5. It is the case of the plaintiff that the marks ''Chartered Financial Analyst'' and ''CFA'' were first coined and used internationally in 1963. The ''CFA'' and ''Chartered Financial Analyst'' designations are recognized worldwide as symbols of high integrity and professional excellence by investment professionals, employers, educators, regulators, government bodies and agencies, and the public.
6. It is averred that candidates who seek the CFA charter from the plaintiff must pass a series of three six-hour examinations, covering, inter alia the fields of accounting, economics, securities analysis and asset portfolio management, and must have at least four years of acceptable work experience as a financial analyst. Finally, candidates must demonstrate their good character and integrity by submitting three character references, and must comply at all times with the Code of Ethics and Standards of Professional Conduct of the plaintiff. Upon successful completion of the plaintiffs'' rigorous application and examination program, candidates are awarded the right to use the professional designation ''Chartered Financial Analyst'' or ''CFA''. The ''CFA'' and ''Chartered Financial Analyst'' designations are recognized worldwide as symbols of high integrity and professional excellence by inve
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