2018 (3) TMI 1433 - HC - Indian Laws

Maintainability of petition - Jurisdiction of Court - Compliance with Sec 2(2) of Cost and Works Accountants Act 1959 as amended - petition prayed that the acronym ICOAI be used instead of acronym ICAI which belongs to the third respondent - The first respondent changed their website from ICWAI to ICAI and started representing themselves as ICAI in all its communication with print and electronic media, blatantly misrepresenting to the stake holders by using the acronym ICAI. Whether this Court by exercising the jurisdiction under Article 226 of the Constitution of India need to go into the dispute with regard to the usage of acronym ICAI by both the first and third respondents, especially, when it is an admitted fact that the third respondent themselves have admitted in their counter affidavit that the Trade Mark for the acronym ICAI was registered under the Trade Marks Act, 1999 and the Certificate of Registration of Trade Mark dated 11.09.2016, was issued to them to that effect? Held that - the above question is to be answered in negative and it is held that the third respondent, who sails with the petitioner, has to seek their remedy before appropriate forum by filing appropriate proceedings arising out of infringement of Registered Trademarks or passing off action, if any, as the writ jurisdiction is not the appropriate one, more particularly when the petitioner is not an aggrieved person even. There can be no difficulty in holding that till the name of the first respondent is changed as proposed by them, as stated supra, if they continue to use the acronym ICAI and if the third respondent is aggrieved against such usage in view of the registration of such trademark by the third respondent in their favour as discussed supra, certainly, it is for the third respondent to initiate appropriate legal action before the appropriate forum by filing appropriate application under the Trademarks Act - certainly the present writ petition cannot be maintained that too, at the instance of the petitioner, who is only a member of the third respondent more particularly, when the third respondent has not chosen to challenge such alleged infringement before the competent Court of law so far. Needless to state that the Trademark right is a proprietary right and therefore only such owner of the Trademark, if aggrieved against any infringement of such trademark, has locus standi and consequently a cause of action to initiate appropriate proceedings before the appropriate forum against such infringement and to seek the appropriate relief thereunder. Such proprietary right of trademark is a right in personam and not a right in rem. Therefore, the petitioner, though a member of the third respondent, cannot be called as an aggrieved person, even to initiate the proceedings before such appropriate forum against the alleged infringement. The writ petition fails and the same is dismissed only on the ground of maintainability.

Summary

Issues Involved:
1. Compliance with Section 2(2) of the Cost and Works Accountants Act, 1959.
2. Encroachment into the domain of Chartered Accountants.
3. Usage of the acronym "ICAI" by the first respondent.
4. Jurisdiction of the High Court under Article 226 of the Constitution of India.

Issue-wise Detailed Analysis:

1. Compliance with Section 2(2) of the Cost and Works Accountants Act, 1959:
The petitioner sought a mandamus directing the first respondent to comply strictly with Section 2(2) of the Cost and Works Accountants Act, 1959, and desist from encroaching into the domains earmarked for Chartered Accountants. The petitioner argued that the first respondent, established under the Cost and Works Accountants Act, 1959, was misrepresenting itself by using the acronym "ICAI," which rightfully belongs to the third respondent, the Institute of Chartered Accountants of India.

2. Encroachment into the Domain of Chartered Accountants:
The petitioner, a practicing Chartered Accountant and member of the Institute of Chartered Accountants of India (ICAI), contended that the first respondent, despite being established to promote cost accounting, was encroaching into the domain of Chartered Accountants. The petitioner argued that the first respondent's use of the acronym "ICAI" created confusion among stakeholders, including the government, public sector undertakings, industries, the public, and students.

3. Usage of the Acronym "ICAI" by the First Respondent:
The first respondent, in its counter affidavit, stated that it had been using the name "Institute of Cost Accountants of India" and the acronym "ICAI" following the Cost and Works Accountants Amendment Act, 2011. The first respondent argued that the use of the acronym "ICAI" was authorized and approved by an Act of Parliament and that the petitioner had no locus standi to restrain its use. The third respondent, however, contended that the acronym "ICAI" was a registered trademark under the Trade Marks Act, 1999, and its use by the first respondent constituted an infringement of this trademark.

4. Jurisdiction of the High Court under Article 226 of the Constitution of India:
The court considered whether it should exercise its jurisdiction under Article 226 of the Constitution of India to resolve the dispute over the usage of the acronym "ICAI." The court noted that the third respondent had admitted that the trademark "ICAI" was registered under the Trade Marks Act, 1999. The court held that the third respondent should seek remedy before the appropriate forum for infringement of registered trademarks or passing off actions, as writ jurisdiction was not appropriate for this matter. The court emphasized that the petitioner, being a member of the third respondent, was not an aggrieved person with the standing to initiate such proceedings.

Conclusion:
The court concluded that the dispute over the use of the acronym "ICAI" should be resolved through appropriate legal proceedings under the Trade Marks Act, 1999, rather than through a writ petition. The court dismissed the writ petition on the ground of maintainability, granting liberty to the parties to seek remedies before the appropriate forum. The court also noted that the first respondent had proposed a name change to "Institute of Cost and Management Accountants of India," with the abbreviation "ICMAI," and was awaiting approval from the Central Government.