Published on: 11 July 2023 at 10:45 IST
Court: High Court of Delhi
Citation: ICAI v. Institute of Cost Accountants of India (2023)
Honourable High Court of Delhi has held that Section 29 of the Trade Marks Act, 1999 has preconditions which are namely:
- Plaintiff’s trade mark must be registered
- Defendant must not be a person using the mark by way of permitted use
- Mark must be used by the defendant in the course of trade.
If the precondition is satisfied then the Courts have to ascertain the likelihood of confusion on the part of the public or likelihood of the public presuming an association between the defendant’s mark and the registered trade mark of the plaintiff for determining Trade Mark infringement by the defendant.
40. Section 29(2) as enacted, may be divided into two parts. The first part sets out the preconditions for the provision to apply. These are that— (i) the plaintiff’s trade mark must be registered; (ii) the defendant must not be a person using the mark by way of permitted use; and (iii) the mark must be used by the defendant in the course of trade. The concept of usage, by a person, of a mark, is explained in Section 29(6), according to which use of the plaintiff’s registered mark by the defendant in any manner, including usage on business papers or on advertising, would amount to use, by the defendant, of the plaintiff’s registered mark for the purposes of Section 29. It cannot, therefore, be denied that the defendant is, in fact, using the ICAI acronym within the meaning of Section 29(2) of the Trade Marks Act. Thus, the initial preconditions for the said provision to apply stand satisfied in the present case.
Drafted By Abhijit Mishra
