TaxTMI 
TaxTMI 
2018 (3) TMI 1433
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....hartered Accountants of India, the third respondent herein, for the past 30 years. The third respondent is a public authority established by the Chartered Accountants Act, 1949. The third respondent is identified with the acronym ICAI. b) The first respondent is a public authority established under Cost and Works Accountants Act, 1959 and it is known with acronym ICWAI. The curriculum, methodology of practical training, the testing of theoretical concepts, etc., make the Chartered Accountancy course, toughest in the world, whereas the first respondent conducts the course more like distance education similar to B.Com. and M.com. Even though the first respondent was established with prime objective 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 tra....
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.... using the name "Institute of Cost Accountants of India" and consequently, using the acronym 'ICAI'. The said usage is harmonious with the Act of Parliament and use of the said acronym is bonafide and honest. Thus, the use of acronym ICAI is authorized and approved by an Act of Parliament and the petitioner does not have any locus standi to restrain the first respondent from using the said acronym. The first respondent is using the acronym ICAI in consonance with its nomenclature and never tried to misrepresent the stakeholders for professional opportunities, which are earmarked for the members of the third respondent. However, if need be, the acronym of the first respondent shall be suitably changed and adopt '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....
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....9. The first respondent in the recent past without any legal sanction started representing itself with the acronym "ICAI" on its website. The first respondent's usage of abbreviation "ICAI" would cause confusion in the minds of the members and the students. The usage of the abbreviation "ICAI" by the first respondent is a clear cut violation of Section 15A(3) of the Chartered Accountants Act, 1949. 6. The petitioner filed a rejoinder affidavit stating that the Ministry of Commerce and Industry has nothing to do with the present dispute and availability of alternate remedy is not a bar for exercising jurisdiction under Article 226 of the Constitution of India. 7.The petitioner, as a Party in Person, has also filed a written 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....
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.... petition relates to infringement of Trade Marks and Passing Off and therefore, the writ petition is not maintainable. Merely the Government refers the first respondent for convenient sake as "ICOAI", it does not mean that as if the Government is conferring such title on the first respondent. The second respondent has also categorically stated that the dispute between the parties falls squarely under the Trademarks Act. 11.Heard both sides. 12.The point for consideration in this writ petition, based on the above stated facts and circumstances as narrated and disclosed by the respective parties, is as to 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. 13.I can straight away answer the above question in negative....
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....nder: "Ref.No.:G/128/08/2015 August 20, 2015 Shri V.Sagar, Acting Secetary, The Institute of Chartered Accountants of India, "ICAI Bhawan", Indraprastha Marg, New Delhi-110 002. Sub:Using of abbreviation ICOAI or ICAI (Cost) instead of ICAI Dear Sir, Please refer to your letter No 1-CA(2)/Misc/2015 dated 16th July, 2015 with a copy to Shri Manoj Kumar, Joint Secretary, Ministry of Corporate Affairs on the above subject. The Institute is using the abbreviation "ICAI" for its nomenclature "Institute of Cost Accountants of India" as per amendment made in The Cost and Works Accountants (Amendment) Act, 2011 and there is no option other than to use 'ICAI'. However, as per The Cost 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 'ICMA....
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....tandi 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. 20. It is vehemently contended by the petitioner and the third respondent that availability of alternative remedy is not a bar for entertaining this writ petition and exercising the jurisdiction of this Court under Article 226 of the Constitution of India. True, it is not that this Court is powerless or that availability of an alternative remedy will always 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 availabili....