The Chartered Institute of Taxation v. Institute of Chartered Tax Advisers of India Limited

RAJIV SAHAI ENDLAW, J.

AUGUST 22, 2019 "gsr"/pp..

(Corrected and released on 14th September, 2019).

* IN THE HIGH COURT OF DELHI AT NEW DELHI % Date of decision: 22nd August, 2019 + CS(COMM) No.448/2019, IAs No.11442/2019 (for exemption), 11441/2019 [u/O XI R-1(4) of CPC] & 11440/2019 (u/O XXXIX R-1&2 CPC). THE CHARTERED INSTITUTE OF TAXATION .... PLAINTIFF Through: Mr. Sanjeev Sindhwani, Sr. Adv. with Mr. Naqeeb Nawab & Mr. Himanshu Deora, Advs. Versus INSTITUTE OF CHARTERED TAX ADVISERS OF INDIA LTD. …...DEFENDANT Through: None. CORAM: HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW 1. The plaintiff has instituted this "suit for declaration, permanent injunction and damages in respect of groundless threats under Section 142 of the Trademarks Act, 1999", pleading, (i) the plaintiff, having its registered office at London, is the leading professional body in United Kingdom, concerned solely with taxation and its mission is the advancement of public education in taxation; (ii) the plaintiff administers and awards two qualifications: "Advanced Diploma in International Taxation" (ADIT) for international tax professionals around the world, and the "Chartered Tax Adviser" (CTA) qualification for domestic tax practitioners in the United Kingdom; (iii) the trade mark ADIT, which is an acronym, was adopted by the plaintiff in the year 2003 and is in use since then and is one of the most prestigious qualifications in professional tax expertise and is popular among professionals in various countries including India; the plaintiff conducts its examinations for ADIT in various countries around the world including in India; the plaintiff has at least 346 current ADIT students, 67 ADIT graduates and 7 International Tax Affiliates in India; (iv) the plaintiff has made applications for registration of its mark ADIT in Classes 9, 16, 35, 36 and 41; (v) the defendant has opposed the application of the plaintiff for registration of the trade mark ADIT in Class 41, "on misconceived grounds"; there is no opposition to the application for registration in other classes; (vi) the plaintiff has also acquired common law rights in the trade mark ADIT which is used by the plaintiff in provision of examination services, publication of instructional and teaching material, provision of training conferences and educational courses and various other related and ancillary services and the trade mark ADIT is distinctive of the plaintiff and the plaintiff has considerable goodwill and reputation attached thereto; (vii) the defendant is a company incorporated under the Companies Act, 2013 having its registered office at Kota in Rajasthan; (viii) the plaintiff and the defendant have past litigation history with respect to plaintiff"s well known and distinctive trade marks "CHARTERED TAX ADVISER" and "CTA"; (ix) the trade mark ADIT, which is the subject matter of the present suit is not the subject matter of the Kota suit; the plaintiff has also filed a Counter Claim in the said suit; there is an interim order in the said suit against the plaintiff, qua the trade marks "CHARTERED TAX ADVISER" and "CTA"; the plaintiff has preferred an appeal to the High Court of Rajasthan at Jaipur against the said interim order and the said appeal is pending; (x) the plaintiff has also filed cancellation / rectification petition against the defendant for the mark and the said proceedings are also pending before the Intellectual Property Appellate Board (IPAB); (xi) the defendant has sent various communications to the Trade Marks Registry in respect of plaintiff"s application for the trade mark / trade name "The Chartered Institute of Taxation", which is not even subject matter of dispute in the Kota suit; (xii) the opposition filed by the defendant with the Registry of Trade Marks to the application of the plaintiff for registration of the trade mark ADIT in Class 41 is on "frivolous, misleading, concocted and false grounds, and merely to harass the plaintiff"; the defendant has opposed on the basis that it is the registered proprietor of the trade marks "CHARTERED TAX ADVISER" and "CTA";