JUDGMENT (Oral)

I.A.7230/2021 (under Order XXXIX Rules 1 and 2 of the CPC)

1. The plaintiff is The Institute of Chartered Accountants of India. The defendant is The Institute of Cost Accountants of India. The plaintiff abbreviates its moniker to the acronym ICAI, as does the defendant. Chagrined at this, the plaintiff has instituted the present suit against the defendant, objecting to the defendant's use of the ICAI acronym. The plaint, therefore, seeks an injunction against the defendant from using the said ICAI acronym in any manner whatsoever. The plaintiff has filed, with the plaint, I.A. 7230/2021 under Order XXXIX Rules 1 and 2 of the Code of il Procedure, 1908 (CPC), seeking interlocutory injunctive reliefs. This judgment decides the said application.

2. I have heard Mr. Chander Lall, learned Senior Counsel for the plaintiff and Mr. Sandeep Sethi, learned Senior Counsel and Mr. Munish Mehra, learned Counsel for the defendant on the said application.

3. The word mark ICAI, being an abbreviation of 'Institute of Chartered Accountants of India' stands registered in favour of the plaintiff, by the Registrar of Trade Marks, with effect from 25th March 2011 in Class 41 of the Nice Classification, which pertains to the very same activity, the only difference being that the plaintiff classically caters to Chartered Accountants, whereas the defendant is the Institute of Cost Accountants.

4. The plaintiff claims user, of the ICAI mark, since 1949. The defendant, on the other hand, was rechristened as the Institute of Cost Accountants of only in 2012. Prior thereto, since 1959, the defendant was functioning as the Institute of Cost and Works Accountants of India (ICWAI). It appears that the defendant had sought, from the Ministry of Corporate Affairs (hereinafter the 'MCA'), a change of its name from the Institute of Cost and Works Accountants of India to the Institute of Cost and Management Accountants of India. This proposal was opposed by the plaintiff who addressed various communications to the MCA, proposing that a more appropriate appellation to describe the defendant would be the 'Institute of Cost Accountants of India'. Mr. Mehra submits that it was consequent to these missives from the plaintiff that the MCA changed the name of the defendant institution from The Institute of Cost and Works Accountants of India to The Institute of Cost Accountants of India, with effect from 1st February 2012.

5. Consequent thereon, the defendant adopted the acronym ICAI, which is, admittedly, identical to the plaintiff's ICAI acronym, as an abbreviation of its title, with effect from 2012, from which date the defendant claims user of the said acronym.

6. Mr. Chander Lall, learned Senior Counsel for the plaintiff submits that, thus, the plaintiff has, over the defendant, the advantage of both priority of registration as well as priority of use of the ICAI acronym. Inasmuch as the acronym of the plaintiff and the defendant is identical, Mr. Lall invokes Section 29(2)(c) read with Section 29(3)^{1[29. Infringement of registered trade marks. -
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of -
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the}