Appeal against BFA for infringement of CFA registered mark dismissed
IN THE HIGH COURT OF DELHI
The Relevant Text of the Order as follows :
87. Drawing inference from the above-mentioned judgments, as well as table reproduced at paragraph 30 above, courses offered by the plaintiff and the defendant as CFA and BFA program are certification courses, aimed at candidates interested in financial/investment services, who have at least completed their under-graduation, both with a different course structure. Insofar as the CFA program is concerned, it is the conceded case of the plaintiff that after completion of the course/program, successful candidates can even use the ‘CFA’ as part of their professional designation. The plaintiff has also pointed out in the plaint that numerous industries and scholarly publications describe the rigorous pre-requisites to earn the CFA designation and urge potential investors to look for and rely upon the CFA designation in choosing an investment advisor and that the CFA designation is recognized by over 40 governmental bodies and regulatory agencies throughout the world. If that be so, any prospective candidate who seeks to pursue CFA program, owing to the difference in curriculum/course structure, professional designation, acceptance at various organizations etc., in normal course will not confuse the same with the course offered as ‘BFA’ by the defendant. Moreover, the defendant’s program BFA is not a substitute for the course offered by the plaintiff. Even though in similar/identical areas, the curriculum as admitted by the parties are not the same. Similarly, the assessment pattern/examination patterns of both the programs are also different. The defendant has, in that regard has differentiated/pointed out in its brochure that the courses provided by the parties are different. Therefore, prima-facie I am of the view that the class of customers who are likely to avail/pursue the courses of the either the plaintiff or the defendant will be capable of differentiating between the two programs before enrolling for their preferred course.
88. That apart, I agree with the submission made by Mr. Sai Deepak that ‘Finance Academy’ being a generic combination and there may be number of institutions with the appellation Finance Academy or containing its abbreviation ‘FA’, any injunction granted shall have a bearing on those usages/institutions. In this regard I may state that during the preparation of this Judgment, I did an organic online search in Google, being a popular search engine, with the keywords ‘Finance Academies’, to find out finance academies, if any, conducting educational/certification programs/exams. The organic search returned the names of two academies specifically containing the combination ‘Finance Academy’ namely IFA-Indian Finance Academy and Pioneer House Finance Academy along with various other institutions. The abbreviation of the former being IFA, surely any finding that ‘BFA’ is deceptively similar to ‘CFA’ shall have a bearing on ‘IFA’ as well. In fact, it shall have a bearing on every mark with suffix ‘FA’. Similarly, I also note that there are other courses such as Bachelor of Fine Arts which goes by the abbreviation ‘BFA’ in common parlance.
89. Mr. Sindhwani has relied upon a division bench judgment of this Court in B.K. Engineering (supra) in support of his contention that the use of mark BFA by the defendant is a deliberate attempt to entice the public into believing that an association exists between the plaintiff and defendant. However, the said judgment is clearly distinguishable in facts as ‘B.K’ and ‘B.K. 81’ were the house mark and trade mark respectively of the plaintiff and defendant therein, who were engaged in the manufacture of cycle bells, the Court held the defendant’s mark to be deceptively similar as the product being the same (cycle bell) and there was a likelihood of the purchasing public to believe the product to be of plaintiff company. The Court also held that the owing to ‘common field of activity’ public could be deceived of that there could be some association with the two parties. In the present case, the marks are not deceptively similar and more over the class of customers as against the class in B.K. Engineering(supra) is capable of differentiating between the programmes offered by the parties herein.
90. He has relied upon the Apex Court judgments in Toyota Jidosha Kabushiki Kasiha (supra) and Laxmikant V. Patel (supra) to contend that actual confusion is not required to establish infringement or passing off. Reliance was also placed on a Coordinate Bench judgment of this Court in The Royal Bank of Scotland Group PLC (supra) wherein it was inter-alia held that what needs to looked into by Court under Section 29(2) is whether confusion is likely to be caused or not. These judgments are also clearly not applicable in the facts of the present case, in view of my conclusion above that there is no scope for confusion between the two marks owing the dissimilarity and class of customers who would be enrolling for the respective programmes.
91. In so far as the judgments relied upon by Mr. Sindhwani viz. Aktiebolaget SKF (supra), Larsen and Toubro Ltd. (supra), H&M Hennes & Mauritz AB & Anr. (supra), DPS World Foundation (supra), The General Electric Company (supra), Inter IKEA Systems BV (supra), S. Mehar Singh (supra), Hind Cutlery (supra), NIIT (supra), Ram Kishan & Sons Charitable Trust (supra) and Inter Ikea System B.V v. Akea Systems (supra) ; I have considered them and find that all these judgments are on the line of the impugned marks, abbreviations, therein being deceptively similar, which is not the case in the present matter in view of my above conclusion and hence misplaced.
92. Further, reliance has been placed on Living Media India Ltd (supra) by Mr. Sindhwani, wherein a coordinate Bench of this Court has held that any kind of prefix or suffix would not make any difference so far as the trade name is concerned. I find the reliance is misplaced as the trade name or registered mark of the plaintiff is ‘CFA’ and the mark of the defendant is altogether different as ‘BFA’ and defendant is not using any pre-fix or suffix to the trade name/ trade mark of the plaintiff.
93. Anchorage made by Mr. Sindhwani on Baker Hughes (supra) of this Court and Baker Hughes (supra) (Supreme Court) is clearly weak in the facts of the present case, as in those matters there was a question involved of revocation of an agreement between the parties whereby consent was given for the use of the name ‘Baker’, subject to certain conditions (such as share holding pattern of the plaintiff/appellant to not go down below 40%). It was on the continued use of the said name/mark (foreign registered) after the alleged violation of the agreement that the plaintiff approached of this Court which granted interim injunction on a prima facie view and same was upheld by the Apex Court facie, without prejudice to the trial in the matter.
94. Insofar so a coordinate Bench judgment of this Court in Association for Investment Management and Research and Ors. v. The Institute of Chartered Financial Analysts of India and Ors., 2006 (33) PTC352, is concerned I have carefully perused this judgment as well, only to find, the issue involved therein was whether using of the mark CFA and ICFA by the defendants even after revocation of the agreement by which plaintiff granted them license amounted to passing off or not and the Court granted injunction is said context.
95. I also note that a plea of dilution under Section 29(4) of the Trade Mark Act taken by the plaintiff in the Suit/application was not pressed by Mr. Sindhwani during the course of the arguments. Even otherwise, the said plea will not hold good in view of my conclusion above.
96. Since the plaintiff has pleaded distinctiveness and secondary meaning to its mark ‘CFA’ which is a disputed fact and mandates adducing of evidence and also to find out what is the effect thereof on the impugned mark, I dismiss the application under Order XIIIA read with Section 151 of the CPC, being I.A. No. 14173/2018, seeking summary judgment. I may also state, in fact an ‘oral prayer’ was made by Mr. Sindhwani under Order XIIIA of the CPC for summary judgment in the facts and pleadings put forth by him. Suffice it to say that in view of the judgment of a Division Bench of this Court in Bright Enterprises Private Ltd. v. MJ Bizcraft LLP, 2017 (69) PTC 596 (Del)., an oral prayer being not maintainable under Order XIIIA, I reject the same.
97. In view of my above conclusion, I dismiss the application under Order XXXIX Rule 1 & 2, bearing I.A. No. 2460/2018.
CS (COMM) 619/2018
List before the Joint Registrar for marking of exhibits on November 12, 2020.
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