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TMI Blog2018 (3) TMI 1433X X X X Extracts X X X X X X X X Extracts X X X X ..... ect? 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 t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ective of promoting cost accounting, the past acts clearly establish that the first respondent is more interested in encroaching into the domain earmarked for the third respondent. The first respondent got an amendment to change its name in the year 2012 as Institute of Cost Accountant of India. Thus, to use the name of ICAI, which will create lot of confusion among the stakeholders. The first respondent is fully aware that their members are not equipped at all because of lack of practical training compared to the members of 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. The repeated malicious acts of the first respondent during the past few years is creating lot of confusion in the minds of the stakeholders viz., the Government, Public Sector Undertakings, Industries, the public at large and the students in particular. Therefore, the present writ petition is filed with the relief as stated supra. 3.The first respondent filed a counter affidavit, wherein it is stated as ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t 'ICMAI' as its acronym instead of 'ICAI' or 'ICAOI', as suggested by the petitioner and the third respondent. Neither the petitioner nor the third respondent has any locus standi to dictate or object to the first respondent's use of its acronym. The petitioner cannot invoke the principles of passing off (a private remedy) in a writ petition under Article 226 of the Constitution of India. 4. The second respondent filed a counter affidavit wherein it is stated as follows: The usage of acronym falls under the Trade Marks Act, 1999 coming under the jurisdiction of Ministry of Commerce Industry which is evident from the Certificate of Registration of Trade Mark registering ICAI in the name of the Institute of Chartered Accountants of India under Section 23(2), Rule 62(1) issued by the Government of India, Trade Marks Registry, Mumbai. Thus, the matter relating to the usage of acronym does not fall in the domain of Ministry of Corporate Affairs and therefore, the second respondent is not a necessary party to the present proceedings. 5.The third respondent filed a counter affidavit, wherein it is stated as follows: The third respondent is a stat ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tten submissions reiterating the contentions already raised by him in his pleadings. He further submitted that this Court, while exercising the jurisdiction under Article 226 of the Constitution of India can decide the issue in this proceedings itself. He also submitted that on an earlier occasion, the learned counsel appearing for the first respondent admitted before this Court that the first respondent will consider the change of acronym as ICOAI instead of using it as ICAI . Therefore, he contended that now the first respondent cannot turn around and say otherwise. He further submitted that the second respondent is the competent Ministry and consequently, proper and necessary party to the present proceedings. 8.Mr.Krishna Srinivasan, learned counsel appearing for the third respondent made his submissions supporting the case of the petitioner. He also reiterated the contentions raised in the counter affidavit of the third respondent once again before this Court. He invited this Court's attention to a letter addressed by the first respondent to the third respondent on 20.08.2015, stating that the first respondent Institute has already proposed to the Central Government f ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ard 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. 13.I can straight away answer the above question in negative and hold 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 I find that the petitioner is not an aggrieved person even. 14. It is to be noted at this juncture that the dispute is only between the first and third respondents in using the acronym ICAI . The petitioner, no doubt is the member of the third respondent Institute. But at the same time, the use of the acronym ICAI by the first respondent, can, at the best, give a cause of action to the third respondent to seek redressal of their ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t and Works Accountants (Amendment) Act, 2011, a member is entitled to use the letters 'ACMA' or 'FCMA' after his name to indicate that he is an Associate/Fellow of The Institute of Cost Accountants of India. Our Institute has already proposed to the Central Government for change of name to The Institute of Cost and Management Accountants of India, abbreviation of which is 'ICMAI' and is in accordance with the mission and vision of our Institute. Till such approval is received, there is no other option but to continue with use of the abbreviation 'ICAI'. Thanking you, Yours faithfully, (Kaushika Banerjee) Secretary (Acting) 16.From the above narrated facts and circumstances, two things are emerging, which are as follows: a) The first respondent has already approached the Central Government and made a proposal for change of their name as The Institute of Cost and Management of Accountants of India, abbreviation of which is ICMAI . It appears that the said proposal is still pending. b) It is also made clear by the first respondent in a communication dated 20.08.2015 that till such approval is received, the first responde ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ways be a bar for exercising the jurisdiction under Article 226 of the Constitution of India. At the same time, it is to be noted that the jurisdiction under Article 226 of the Constitution of India is a discretionary jurisdiction and hence it is not necessary for this Court to exercise such discretionary jurisdiction in all cases, notwithstanding the factum of availability of alternative remedy, even though a case is made out by the petitioner. In this case, the alternative remedy is a statutory remedy available under the separate enactment and when such remedy is not only efficacious and also the just and proper course of action, considering the dispute between the parties in this case, this Court is of the firm view that the parties have to agitate the matter by availing the other alternative remedy and certainly not by pursuing this writ petition. 21.The petitioner in support of his claim relied on the decision of the Hon'ble Supreme Court reported in 2004(6) SCC 145, Satyam Infoway Ltd., vs Siffynet Solutions (P) Ltd. Perusal of the said decision would show that the same has arisen out of a suit filed before the concerned City Civil Court in a passing off action. Theref ..... X X X X Extracts X X X X X X X X Extracts X X X X
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