Cfa Institute vs Institute Of Charted Financial Analysts Of India And Ors.

S. Usha, J

The instant three appeals have been filed challenging the common order dated 22.09.08 passed by the second Respondent rejecting the opposition

Nos. MAS 51762, 52359 and 52360 against application Nos. 523516,523515 and 523513 respectively in class 16 under the provisions of Trade Marks

Act, 1999 (hereinafter referred to as the Act). The first Respondent has filed M.P. Nos. 87,88 and 89 of 2010 to take on record the additional counter

statement and M.P. Nos. 90,91 and 92 of 2010 to take on record the documents as additional evidence.

The Appellant herein is the successor in tile and interest to the Institute of Chartered Financial Analysts (ICFA). This Institute was founded in the

year 1959 by the Financial Analysts Federation (FAF) and incorporated in 1962 in Virginia, USA with the objective of developing and administering a

certification programme for investment professionals, where under qualified candidates who pass three levels of examinations and meet other

experience and professional standard requirements are awarded the right to use the Chartered Financial Analyst or CF A designation. This institution

having coined the designation ""Chartered Financial Analyst"" or CFA, began it in 1963 to identify the certification programme to its members and those

belonging to its sister organization, i.e. Financial Analysts Federation (FAF).

In 1990, the ICFA and FAF combined and became subsidiaries of the Association for Investment Management and Research (AIMR). In terms of

the new structure AIMR entered into a co-operative operating agreement with ICFA and FA Fw hereunder AIMR was granted the exclusive licence

to administer the CF A certification programme worldwide. With effect from 1.6.99, ICFA merged with and into AIMR and by virtue of the said

merger, all properties owned by ICFA or any proceedings pending by or against ICFA were deemed to have been transferred to, vested in and to be

continued by AIMR.

With effect from May, 2004, AIMR underwent a further change of name to ""CFA Institute"", which is the current name under which the Appellants

are known today.

The Appellants since 1963 by itself or through its predecessor in interest have been administering a unique and intensive programme of specialized

study and testing in the field of financial analysis and conferring upon qualifying candidates the right to use a professional designation reflecting the

membership of the Appellant.

In 1963, ICFA created, adopted and began using in commerce the marks CFA, ICFA, Chartered Financial Analyst and the Institute of Chartered

Financial Analysts to identify its programme of study, examination and membership.

The CFA programme involves the testing on a global body of knowledge relating to financial analysis with emphasis on ethics, financial accounting,

qualitative analysis, economics, fixed income, security analysis, equity and portfolio management. In order to successfully complete the CFA

programme and be granted the licence to use the CFA designation, candidates must successfully complete the CFA examination comprised of three

rigorous tests given over a minimum three year period and have at least four years of qualifying work experience as an investment professional, i.e.

one who spends a substantial portion of time collecting evaluating or applying financial, economic and statistical data in the investment decision making

process. In addition successful candidates who have been granted the right to use the CFA designation have continuing obligations throughout their

career to comply with stringent professional standards set out in the Appellant's Code of Ethics and Standards of Professional Conduct. Successful

candidates must attest in writing to such adherence each year or have their right to use the CFA designation revoked. The Appellant follows a uniform

examination schedule for its candidates throughout the world whereby the Appellant provides testing on one weekend in June for all three levels and in

December for only the first level test.

On 6.6.1972 the United States Patent and Trade Marks Office issued to the Petitioner, registration No. 935504 for the mark C.F.A. in respect of

association services, in particular, the promotion of interest and professional standards in the field of analysis. Currently the CFA marks are registered

and /or pending registration in 90 countries around the world. In India the Appellants have applied for registration of the CFA marks in classes 9, 16,

35 and 41 including the application to register 'CFA' and CFA logo as a certification trademark. The applications have been accepted and published in

the Trade Marks Journal.

Since 1963, the Appellant has continuously used and extensively promoted the CFA marks and has made substantial investments in building the

reputation of and protecting the CFA marks which are among its most valuable assets. The advertisements promoting the CFA designation offered by

the Appellant have been appearing in prestigious international newspapers and magazines which enjoy enormous circulation and readership among

members of investment profession, investing public, employers and regulatory bodies worldwide including India.

By virtue of the aforesaid long standing use since 1963 wide and extensive publicity / promotion and consistently high standards of ethics and

professional conduct stipulated and enforced by the Appellant in respect of its CFA programmes and CFA marks are recognised worldwide by

investment professionals, employers, educators, regulators, government bodies and agencies and the public as symbols of high integrity and

professional excellence. Individuals who have been granted the CFA charter and the right to use the CFA designation are recognised as having

achieved an unparalleled level of education and knowledge in the fundamental principles of financial analysis.

The Appellant has current membership of nearly 1,00,000 investment professionals in 134 countries including more than 86,000 CFA chart holders

in 128 countries. More than 1,56,000 CFA candidates enrolled for the June and December 2008 CFA examinations. The Appellant has a fast growing

membership and candidates outside North America apart from USA and Canada. The Appellant has in Asia alone more than 32,000 candidates

enrolled for its June, 2008 examination held at 27 exam sites and more than 31,000 candidates in 18 test centers for its December, 2008 examination.

The Appellant has 15 societies across Asia including the Indian Association of Investment Professionals with 372 members, established in 2005. In

June, 2008 more than 2400 candidates from India and in December, 2008 nearly 6000 candidates were enrolled for the examination. Currently there

are 410 charter holders residing in India. The first examination in India was conducted in the year 1981 in Mumbai.

The Appellant has consistently taken action against the instances of misuse of CFA marks by way of suits and / or threat of suits in numerous

cases since 1963. Various financial institutions routinely pay for their employees to enroll in the CFA programmes. Employers throughout the world

including those based in India regularly advertise job openings and seek to hire CFA charter holders in choosing an investment advisor. As a result of

the aforesaid substantial duration, extent and geographical area of use, promotion and registration of the CFA marks, the knowledge and recognition

enjoyed by them in the relevant sections of the public throughout the world including India and the record of successful enforcement of their rights in

the CFA marks, the CFA marks qualify as well-known marks under the Trade Marks Act and thus entitled to be protected.

In the year 1984 the first Respondent represented by Mr. N.J. Yasawy made an unannounced visit to the Appellant's predecessor ICFAS at its

headquarters in Charlottesville, Virginia. He met the then President Mr. Alfred Morley and Chief Operating Officer of the ICFA and other staff

members. In-turn in August, 1985, Mr. Morley toured several countries in Asia in connection with the Appellant's official responsibilities. Upon the

invitation extended in 1984, Mr. Morley visited the Respondent's institute and met M/s. Yasawy , V. Sankaran, Besant Rajand Prasanna Chandra. A

licence agreement dated 14.08.85 was signed by there presentatives of the first Respondent and the Appellant during that meeting. The ICFA Board

of Trustees unanimously approved the report and action of the ICFA International Committee by resolution adopted at a meeting on September, 17,

1985. As President of ICFA, Mr. Morley agreed to sit on the Board of Governors of the first Respondent and to dedicate staff resources and time to

assist the first Respondent with development of its curriculum. In 1987 Mr. Morley appeared in the first Respondent's prospectus as President of the

ICFA on behalf of the trustees of the ICFA. In his capacity as President he also began countersigning the certificates issued to successful candidates.

In 1989 Mr. Morley attended various meetings and participated in the first convocation recognizing the first recipients of the first Respondent's

charter.

Upon learning of Mr. Morley's resignation effective from June, 30, 1990 Dr. Besant Raj asked Mr. Morley to participate on the first Respondent's

Board in his personal capacity as successor to Mr. Darwin Bayston to participate in his capacity as the new President of ICFA and AIMR. In

December, 1991, the first Respondent formally accepted Mr. Morley's resignation from the Board. The Appellant relied upon certain documents in

support of the fact relating to the past relationship between the Appellant and the first Respondent.

a. Licence agreement dated 14.8.1995.

b. Text of October 21,1986 board resolution passed by the first Respondent.

c. Copies of the relevant correspondence exchanged by the predecessors of the Appellant with the first Respondent since February, 1990.

The CFA designation awarded by the first Respondent during the subsistence of collaboration with the Appellant and / or its predecessors was subject

to quality control supervision by the Appellant and its predecessors is amply borne out by the following facts:

a. The licence agreement recorded in the minutes of 14.8.1985 specifically stipulates that the use of ICFA and CFA would be permitted after it has

been determined by the ICFA (US) that the admission standards, study programme and materials and examination process are and continue to be of

the highest caliber related to conditions and circumstances in India.

b. Pursuant to the licence agreement in a board resolution meeting dated 21.10.86, it was decided that the Institute be named as the Institute of

Chartered Financial Analysts of India.

c. In order to assist the first Respondent to develop internationally compatible standards of professional efficiency and moral conduct, the Appellant

would provide extensive help including assistance with study material development and evaluation and critic of the said programme material and

examination on an on-going basis.

d. The former President Mr. Morley was invited and remained in position from October 1985 to December, 1991 . He attended the first Respondent's

Board meetings and counter-signed the CFA charters awarded by the first Respondent as ICFA's President.

e. Due to the efforts of Mr. Morley on behalf of ICFA, the first Respondent was accepted as a full member of the Asian Securities Analysts

Federation at its council meeting held in December, 1987.

f. In May, 1987 Dr. A. Besant Raj, Mr. Prasanna Chandra and Mr. N.

J. Yasawy were invited by the ICFA as special guests to attend the Annual Conference of ICFA's sister organization held in Philadelphia, USA. The

aforesaid facts show that the Appellant exercised quality control over the first Respondent with regard to CFA programme in India.

g. The first Respondent has itself acknowledged the global reputation and enormous goodwill enjoyed by the ICFA in running the CFA programme

worldwide as indicated in the book ""Let There Be Light"" (The Genesis of ICFAI). According to the publisher and as depicted in the first Respondent's

educational programme catalogue this book was prepared under authorization and sponsorship of the said Respondent. The said book records that the

first Respondent recognized that even prior to licensing agreement with ICFA, the reputation and goodwill enjoyed by ICFA had spilled over into India.

h. However, around 1991 difference arose between the Appellant and the first Respondent over the scope, content and nature of CFA programme

offered in India. The Appellant instead of abruptly snapping ties with the first Respondent tried to gently wean the first Respondent from its affiliation

with the Appellant. However, little did the Appellant realize that the first Respondent in sheer disregard of and despite the genuine efforts of the

Appellant to protect its students, had along been acting in bad faith. The acts of bad faith are;

(i) in 1995, the Appellant discovered that the first Respondent had begun an operation in the United States called 'Trans world University'. This

operation purported to offer the said Respondent's CFA programme to individuals in the USA. Such conduct by the first Respondent exceeded the

scope of 1985 licence agreement. When confronted with this fact, the first Respondent agreed to and did in fact sign an agreement recognizing the

Appellant's right in the CTA marks and in any other names or marks that are likely to cause confusion with the marks. Subsequent to the signing of

1995 settlement agreement, the first Respondent had reneged on its terms, compelling the Appellant herein to seek enforcement of the same. On

7.10.1998 the Virginia Federal District Court entered a default Judgment in favour of the Appellant.

(ii) On 29.1.1990 while the 1985 licence agreement was in effect, the first Respondent filed for trade mark protection of CFA Programme with the

Indian Trade Mark Office.

(iii) The Appellant herein continued to engage in good faith, negotiations with the first Respondent keeping in mind the interest of the candidates

enrolled in India for the CFA programme. The Appellant learned that the first Respondent had filed a caveat petition before the Hyderabad Court.

However, they had also instituted a threat action on 13.3.1997 in the Court of the Third Assistant Judge, City Civil Court at Hyderabad being O.S. No.

1423/97 seeking to restrain the Appellant herein from taking any steps regarding change of name of first Respondent or of the CFA charter granted

by the said Respondent. The first Respondent had in fact withdrawn the said suit on 26.2.08 without assigning any reasons. The City Civil Court while

granting permission to first Respondent to withdraw the suit, had observed that the first Respondent had wasted the precious time of the Court for 9

years and forced the Appellant to incur costs in defending the suit including expenses associated with the Appellant's witness traveling to Hyderabad

from USA.

(iv) The Appellant was left with no option but to formally terminate its relationship and the licence agreement with the first Respondent. Despite the

termination of the relationship, the first Respondent and its various constituent organizations continued to use the Appellant's mark in violation of the

Appellant's exclusive proprietary rights and goodwill therein. To protect its exclusive right, the applicant was forced to file a suit before the Hon'ble

High Court of Delhi in CS (OS) 210/2004 against the first Respondent and the said suit is pending.

(v) On 4.8.06 Hon'ble Justice Manju Goel of Delhi High Court had in the said suit ordered that ""In view of the above, I allow the application under

Order XXXIX Rules 1 and 2 Code of Civil Procedure and restrain the Defendants (ICFAI and Anr.) during the pendency of the suit from using any

of the trade marks or service marks CFA, Chartered Financial Analysts, The Institute of chartered Financial Analysts of India, ICFA and ICFAI or

any other mark or name which may be identical or deceptively similar to these marks and from passing off their programmes or business as part of the

Plaintiffs...

(vi) The first Respondent had appealed against the above said order and the appeal is pending. The Hon'ble Division bench of the Delhi High Court

was pleased to reject the interim stay application of the first Respondent to vacate the order of the Single Judge and directed that the appeal be heard

in the regular list..

(vii) The first Respondent despite the interim injunction dated 4.8.06 continued to offer its impugned CFA programme to its students through its

sponsored universities. After the Appellant's legal notice to these universities remained unanswered, the Appellant was constrained to move the

impleadment motion in the pending suit before the Delhi High Court. On 5.8.08 the Delhi High Court had allowed the said impleadment application

permitting the Appellant to implead the first Respondent's various sponsored universities as co-Defendants. By order dated 17.11.08 the Bench

hearing the appeals disposed of these appeals as it did not find any merits in the apprehensions which prompted the filing of these appeals.

The first Respondent having entered into a licence agreement with the Appellant, had in bad faith filed an application for registration of the trade

mark CFA Programme, CFA logo and ICFAI on 29.1.90 for the goods, printed matter and publications, periodicals, instructions, educational and

teaching materials by the above given applicants in class 16 under application Nos. 523513,523515 and 523516 respectively. The applicants had

claimed user from March, 1985 for the mark CFA Programme and since March, 1986 for the mark CFA logo and ICFAI. The said applications were

advertised in the Trade Marks Journal. The Appellants herein had filed their notice of opposition on various grounds inter-alia, (a) that their

organization was a globally non-profit organization found in the year 1959 and were administering the Chartered Financial Analyst / CFA Programmes

and exams (b)awarding CFA/CFA Charter and (c) grant the right to use the marks Chartered Financial Analyst and CFA to successful candidates.

The Appellants were also the registered proprietors of the mark CFA in the United States amongst other countries. they were granted registration of

the mark C.F.A. by the United States Patent and Trade Mark Office in international class 42 under registration No. 935504. The CFA mark was thus

the creation of the opponent which was developed and had been in continuous use since 1963. In addition to the mark CFA and Chartered Financial

Analyst, the Appellant had also used the marks ICFA, C.F.A., CFA digest and Institute of Chartered Financial Analyst. As regards the use of the

impugned trademark CFA Logo, CFA programme and ICFA Programme which is identical with that of theirs would definitely lead to confusion and

deception among the public. Therefore, the registration would be contrary to the provisions of Section 11(a) of the Act. The first Respondent is thus

not the proprietor of the impugned trademark which is an imitation of the Appellant's well-known and reputed trade mark.

The first Respondent filed their counter denying various averments made and stated that they are a Society registered under the A.P. Public

Societies Registration Act, 1350 (Act I of 1350 F). After the formal procedures were completed, the learned Deputy Registrar heard the matter and

passed the impugned order with the following findings:

a. The issue under Section 9(2)(a) of the Act was decided in favour of the first Respondent stating that there was no dishonest intention or bad faith

on the first Respondent's side in adopting the marks in question and there was no likelihood of confusion / deception among the general public because

to notify their marks they put ICFA (USA) ICFA (India). The Registrar had also gone ahead stating that even if there was a licence agreement

entered into, the licence agreement did not mention as to the trade mark rights or about granting any licence to the first Respondent's institute by the

Appellants.

b. The objection under Section 9(2) (a) of the Act was that as on the date of filing of the impugned applications the first Respondent had a user of

nearly five years and to substantiate their claim, the Appellants have also filed enormous evidence by way of affidavit and exhibits. The marks applied

for are distinct with distinctive logo with device and it is not identical with the Appellant's marks.

c. The impugned marks were prohibited registration under Section 11(3) (a) of the Act as the use of the mark has to be prevented under the law of

passing off. But here the order passed by the Hon'ble High Court restraining the Respondent from using the trade marks had not attained finality.

d. Learned Registrar had also further observed that in the minutes recorded on 14.8.85, it is not mentioned that ICFA(USA) are the owners of the

property ICFA which is a trade mark and there is no clause which says that ICFA (USA) is permitting the Indian company to use ICFA. There is no

consideration or time limit and that is for the American company to encourage the Indian company and assist the Indian company in all possible ways.

That apart there are no outlets or branches in India except that they conduct periodical examination in Bombay and so the question of passing off does

not arise. In view of the above the first Respondent is the lawful proprietor of the trade mark and is entitled for registration under Section 18(1) of the

Act.

e. The first Respondent has successfully discharged the onus to prove that they are the proprietors of the trade mark in question and as such are

entitled to registration and in order to safeguard the trade and public at large, the Registrar in exercise of the discretionary powers and to maintain the

purity of the Register, had allowed the application for registration dismissing all oppositions.

The Appellant herein being seriously aggrieved by the said order dated 22.9.08 had filed these appeals on the following grounds:

a. The impugned order is contrary to law, public policy, justice, weight of evidence and facts and ought to be set aside.

b. The impugned order passed is a non-speaking order where the learned Registrar has not given any reasons in support of her conclusion that the first

Respondent had successfully discharged the onus to prove that they are the proprietors of the trade mark in question.

c. The impugned order passed suffers from non application of mind and is thus liable to be quashed on this ground alone.

d. The impugned order passed does not record any reasons in support of the conclusions drawn by the second Respondent and is thus arbitrary and

violative of principles of natural justice. The second Respondent being a quasi-judicial authority was bound to give reasons in support of the impugned

order and has thus committed a breach of basic principles of natural justice which governs exercise of powers by all quasi-judicial and administrative

authorities on the premise that the duty to give reasons ensures fairness in the process of decision making and thus prevents miscarriage of justice.

e. By entertaining and mechanically upholding the contrary plea raised by the first Respondent on the issue of passing off which had already been

adjudicated by the High Court of Delhi, the second Respondent failed into a grave err or of law by causing serious prejudice to the Appellant's

valuable rights and has caused miscarriage of justice. On this ground alone the order passed by the second Respondent is bad in law and thus liable to

be set aside.

f. The second Respondent has mechanically upheld the arguments of first Respondent without any application of mind and regard for the principles of

issue of estoppel.

g. The second Respondent failed to note that even though the order dated 4.8.2006 was an interim order, it possessed the characteristics and trappings

of finality in that it adversely affected a claimed right of the first Respondent in a direct and immediate way and decided an important aspect of the

trial in the ancillary proceeding.

h By failing to take note of a finding of a higher forum and proceeding to hear and dispose all opposition proceedings in a mechanical manner, the

second Respondent has acted contrary to the settled principles of law and thus the order passed is liable to be set aside on this basis alone.

i. The second Respondent further ignored the fact that the applications filed by the first Respondent and the submissions made in support thereof were

not only made in bad faith but also constituted a grave and malicious abuse of process of law.

j. By allowing the first Respondent to proceed in the matter when the civil suit was pending, the second Respondent had ignored the settled principles

of law governing judicial restraint in the face of prior adjudication in pending proceedings between the same parties involving identical issues and

rendered an order which confers statutory rights on the first Respondent in the marks on the footing that it is the lawful proprietor of these marks

contrary to an in negation of the adjudication by a higher forum that first Respondent is not the lawful proprietor of these marks.

k. The second Respondent has further mechanically reproduced and upheld the contentions raised by the first Respondent that the Appellant was not

entitled to claim to be a globally well-known institute.

l. The second Respondent had failed to consider the evidence placed by the Appellant and had gone ahead holding that the first Respondent is the

lawful proprietor of the trade mark and had exercised her discretion in an arbitrary manner.

m. The order passed by the second Respondent does not address any of the documents and submissions advanced by the Appellant and is thus a non

speaking order liable to be set aside on this sole ground alone.

n. The second Respondent has also ignored the Trade Marks Act, 1999 which prohibits registration of the trade mark which is contrary to law of

passing off.

o. The first Respondent misrepresented before the second Respondent that it had been using the trade mark since March, 1985 for which no

documents were placed to support the aforesaid claim. Being a finding without any basis in law and fact and without any support in record of the case,

the conclusion reached by the second Respondent is arbitrary and unsubstantiated and is liable to be set aside.

p. The second Respondent has arbitrarily held that the CFA logo comprising letters CFA with device is a label mark and is not identical to the

Appellant's mark CFA.

q. The second Respondent had mechanically set out the submissions made by the first Respondent that the pendency of the Appellant's suit would not

in any way affect the proceedings before the Registrar of Trade Marks but a bald and unsubstantiated assertion of settled law.

r. By upholding the submissions of the first Respondent as to vested rights and honest concurrent user when there was no material on record to

substantiate the same, the second Respondent has fallen into a grave error of law and caused much prejudice and harm to the Appellant's valuable

intellectual property rights in the marks.

s. The second Respondent has completely ignored the weight of evidence and bad faith conduct of the first Respondent and thus caused grave

prejudice and harm to the Appellant's rights in the marks.

t. The second Respondent has wrongly exercised the discretion in favour of the first Respondent under the provisions of Section 18(1) of the Act.

The second Respondent ought to have considered that the first Respondent had filed the impugned application in bad faith and therefore could not

have claimed any independent right otherwise than as those arising out from the licence granted by the Appellant herein.

u. The Appellant, therefore, prayed that the impugned order be set aside and the appeal be allowed with exemplary costs.

The first Respondent herein filed their counter-statement denying the various allegations made in the grounds of appeal. The first Respondent

stated that they originally started the institution in the name and style of Institute of Certified Financial Analysis in the year 1984 and subsequently

during the year 1985 the trading style was changed as The Institute of Chartered Financial Analysts. They are a well established and well known

institution carrying on business of imparting education for students in matters of finance and financial analysis and awarding certificates to such

students who have successfully completed the course. Ever since the date of its commencement they had been using the trade mark CFA in respect

of imparting education in various fields including financial management, financial analysis and in matters of finance. They have started using the

trademark CFA since 1.3.86 and had applied for registration of the trade mark. The first Respondent further submitted that the service charges

collected by the first Respondent runs to several lakhs of rupees from which it may be seen that the Respondent's trade mark had earned very good

reputation and goodwill and has thus become a well-known mark.

In order to improve their curriculum of various programmes, the first Respondent visited the Appellant's institute and had an elaborate discussion

with the management of the Appellant's company. During the course of discussion the Appellant's management had accepted to assist and encourage

the first Respondent to develop the institution. Based on the discussion and in the minutes recorded, the Appellants had deputed its staff and Mr.

Morley had started visiting the first Respondent and hence he was in the Board of the first Respondent's institution. In fact the assistance rendered by

the Appellants ended during the year 1991.

The first Respondent states that they were registered as a society under the Andhra Pradesh (Telengana Areas) Public Societies Registration

Act. They had honestly conceived and adopted the mark CFA in the year 1984 and using the same since then and the Appellant herein was aware of

the same. In order to identify between the two institutions, it has been suggested in the minutes dated 14.8.85 that the Appellants herein be called

ICFA (USA) and first Respondent be called ICFA(India). It is further stated that since October, 1984 the first Respondent is using the said trade

mark CFA without any interruption till the Appellant obtained interim orders in suit No. 2671 of 97 before the High Court of Delhi. The first

Respondent states that at the later stage of 1990, the Appellant started raising doubts about use of trade mark CFA, Chartered Financial Analysts,

Financial Analysts Journal, Institute of Chartered Financial Analysts of India and any other names or mark with a plea of likely to cause confusion

with the names and marks of their own and started claiming the licence agreement which never existed. During the course of correspondence, the

Appellants herein by letter dated 9.2.90 refers the relationship between the Appellants and the first Respondent as a basic co-operative arrangement.

Even in the letter dated 28.9.92 the Appellant re-affirmed that the relationship of the Appellant with the Respondent as detailed below:

I am writing to make you aware of the concern over the confusion of our respective organizations and designations. In addition as the investment

profession becomes truly global in scope, we can envision growing confusion over the Chartered Financial Analyst designation, which we have been

awarded for the past 31 years and your own CFA designation.

Thus the Appellant themselves acknowledged that the CFA designation awarded by ICFAI exclusively belong to the first Respondent. The Appellants

have stated in the said letter that two organizations ICFA and ICFAI are distinct and separate and having no common affiliations. In order to avoid

confusion in the growing business demand, after prolonged correspondence between the parties, an amicable settlement was arrived at and the same

was recorded by an agreement signed by both the parties. Under the said agreement it has been agreed that the first Respondent herein should cease

promoting in the US and refrain from promoting any programme in Canada and cease using any signs, advertising or other identification in the U Sand

Canada that uses any of the names or marks identified, for which the Appellants herein have not raised any objection for using the same in any part of

the world other than Canada and US and the usage in India was not a subject matter of dispute as they believed that the Respondents are the real

owners, users of the trade mark CFA and ICFAI in India. Contrary to the above agreement, the Appellants had instituted a civil suit and had obtained

interim orders of injunction. It is a matter in appeal before the Division bench. The first Respondent also submitted that there was no stay granted by

the Hon'ble High Court restraining the trade mark authorities from proceedings with the opposition proceedings.

The first Respondent also submitted that the Appellants had no study center in India. Neither the programme of the Appellant is accredited by the

Government of India nor the Appellant institute is registered in India whereas the Respondent is a registered society in India. The Appellants had

entered into an arrangement with Indian Association of Investment Professions in the year 2005 only. It is submitted that even according to their

admission, the Appellants have no associates in India prior to 2005. Mere conducting of examinations will not confer any use of the trade mark in India

by the Appellants. It is further submitted that even before the Appellants came to India after 1985 the first Respondent is using the trade marks as an

acronym of the Institute of Certified Financial Analysts since the year 1984.

The first Respondent does not admit the user claimed by the Appellant since the year 1963, for which no documents have been produced to prove

the same. In fact the Appellants have not used the trade mark in India till date. The Appellants, though are claiming to be the registered proprietors of

the trade mark CFA under No. 935504 registered with the United States Patent and Trade Marks Office, no documentary proof has been filed before

the Registry or before this Hon'ble Board. In fact the Appellants have registered the logo CFA as a certification mark in some of the countries

including U.S. The Appellants are not having any training centre or branch of its organization in India or conducting any classes for students in India.

In the year 2005 the Appellants had established a society called Indian Association of Investment Professions with 372 members from which it is clear

that the Appellants have not entered India before 2005. The first Respondent submits that a mere reading of the minutes entered into on 14.8.85 would

show that as per the minutes the Appellant's predecessor had to assist the first Respondent at the cost of first Respondent. There is no mention of

granting any licence to first Respondent by the Appellant's predecessor. In the said minutes it has also been decided that in order to distinguish

between the two , the Appellant's predecessor be called ICFA, USA and the first Respondent called as ICFA, India. Therefore, it is very clear that

the name and trading style of the first Respondent was clearly admitted by the Appellant's predecessor in title and consequently the programmes

offered by the first Respondent have been recognised by the Appellant's predecessor. Having entered into a such agreement, it is not open to the

Appellants to now oppose the use of the trade mark. It is further submitted that Mr. Morley had been signing the certificates issued by the first

Respondent only in his capacity as Board Member of the first Respondent and the same cannot be treated as counter-signed by him on behalf of the

Appellant's predecessor in title. The arrangement between the Appellant's predecessors in title and the first Respondent was only for extending the

assistance and not a licence agreement. The Appellants have miserable failed to prove by documentary evidence that they have granted licence to the

first Respondent. The first Respondent submits that no quality control was exercised by the Appellant's predecessor in title in the programmes

conducted by the first Respondent. The Appellant herein is defending the case under the presumption of alleged licence agreement which was not

entered into between the parties. The question of granting licence to the first Respondent herein did not at all figure during the discussion held in the

year 1985.

It is further submitted that if the first Respondent was acting in bad faith, the Appellant's predecessor would be the last person to keep quite

without taking any positive action against the first Respondent instead of allowing the first Respondent to continue its programme even after the

withdrawal of their assistance in the year 1991. It is further submitted that an agreement was entered into between the parties where under the first

Respondent had agreed not to operate its programmes in the territories of USA and Canada and it is also submitted that in order to safeguard the

interest of first Respondent and in anticipation of the Appellant's predecessor filing a suit against the first Respondent, the first Respondent filed a

caveat petition as well filed a suit on the file of the City Civil Court, Hyderabad. Since the Appellant's predecessors had filed a suit before the Hon'ble

High Court of Delhi, the first Respondent had withdrawn the suit filed before the City Civil Court, Hyderabad.

It is further submitted that the question of application of provisions of Section 11(3) (a) of the Act is not attracted in this case since the first

Respondent's adoption is prior in point of time as far as India is concerned and the same has been recognised by the Appellant's predecessor at

various stages.

Learned Registrar has passed the impugned order based on the documents filed by the Appellant as well as the first Respondent and after

considering the arguments of both the parties and therefore, the impugned order cannot be said to be a non-speaking order. As regards the finding of

the Hon'ble Delhi High Court regarding licence agreement, the same is under challenge and the same cannot be relied on for deciding the case on

hand.

It is also submitted that immediately after Mr. Morley left the first Respondent institution, the Appellant with an ulterior motive and dishonest

intention based on trade jealousy and bad faith started the dispute based on presumptive conclusion that the minutes signed by both the parties is a

licence agreement and they are taking the same stand even though there is no mention about the term licence in the agreement.

In the above circumstances as the Appellants have not made out a any case worth the name to interfere with the order passed by the learned

Registrar and it is prayed that the appeal be dismissed with exemplary costs.

The Appellant herein filed their rejoinder to the reply filed by the first Respondent, denying all the allegations made in the counter statement. The

Appellant stated that the first Respondent had not disclosed that Hon'ble Division Bench of the Delhi High Court while rejecting the stay application

had directed that the main appeal be listed for hearing in the due course. In fact the High Court of Delhi had held that the Appellant is the user of the

mark CFA and the first Respondent is not using the same after it entered into a kind of collaboration with the Appellant; that the genesis of

Respondent lay in the licence granted by the Appellant; that if the first Respondent were allowed to use the impugned marks the Appellant would lose

the right and its valuable rights in the marks would be lost or substantially damaged. Pursuant to the said order the first Respondent had issued a press

release regarding the stay order and necessary steps taken by it to comply with the earlier interim orders of the Delhi High Court. The first

Respondent had further suppressed the material fact that, in the trade mark proceedings pending before the High Court of Delhi it has already

submitted on oath in its pleadings that it is no longer using the impugned trademark in relation to its business activities and in the light of the order dated

4.8.06 various institutes being run by the first Respondent have changed their names and are no longer using the impugned trade mark.

It is respectfully submitted that the trade mark application which has given rise to the present proceedings was made by the first Respondent in the

year 1990 and the Appellant and the first Respondent had a licence agreement dated 14.8.85. The said impugned applications were filed without

informing the Appellant and in the teeth of the express acknowledgement by the first Respondent that the CFA formative marks belong to the

Appellant.

Counsel for the first Respondent further enumerated the developments which had taken place after the appeal had been initiated in the rejoinder to

the counter statement.

We have heard Shri Sanjay Jain, Senior counsel along with advocate Shri Rajendra Kumar for the Appellant and learned Counsel Shri A.A.

Mohan along with Ms. Shuba Shiney for the first Respondent on 22.04.2010 and 23.04.2010. As the parties are same and the facts are also the same

in all the three appeals, they were heard together with the consent of both the parties and a common order is being passed. The Miscellaneous

Petitions filed by the first Respondent, though were not in the day's list, were also taken up for hearing with the consent of both the parties along with

the appeals.

32 . Learned senior counsel for the Appellant mainly contended that they were the registered proprietors of the trade mark C.F.A. The Appellants are

prior adopters and users of the trade mark both in India and outside. The Appellants adopted and started using the trade mark as early as 1963 and as

far as India is concerned their use was from the year 1981. The counsel further stressed on the fact that the first Respondent was very much aware

of the Appellant's use in they ear 1981 at Mumbai where the first exam was conducted. In such case, the first Respondent's use cannot be said to be

a bonafide use.

The first Respondent had applied for registration of the impugned trademarks on 29.1.1990 in bad faith against the agreement which was entered

into between the Appellant and the first Respondent. The registration of the trademarks will be in contravention of the provisions of Sections 11 and

18 of the Act. As the rival marks were identical, the registration of the mark would be in contravention of the provisions of Section 11(3) of the Act as

it would lead to confusion and deception. The act of passing off will also be a result. The first Respondent being aware of the Appellant's adoption and

use cannot be said to be the proprietor of the trade mark as per the provisions of Section 18(1) of the Act. In the instant case, there is no issue of

trans border reputation as the Appellants have already come into India and have conducted examination in the year 1981 in Mumbai and thus have had

their name known in India.

The learned Counsel further brought to our notice the minutes of the meetings held on various dates. The counsel submitted that in the meeting

held on 10th May, 1987 at Philadelphia Mr. Prasanna Chandra, N.J. Nasawy and Mr. A. Besant C Raj were the invited guests for India. He further

pointed out to the report of the meeting at page 195 of the typed set of documents. ""Dr. Raj thanked the Board for the opportunity to attend the

meeting. He expressed appreciation for the valuable help received from the ICFA, especially from Mr. Morley, in enabling the ICFA-India to

accomplish much in a short time period. Dr. Raj then described the program developed in India and indicated that 6,000 students have enrolled for first

exams. The first two exams have been given, and the first CF As will be awarded in 1989. Due to many requests for assistance in upgrading skills, the

ICFA-India will expand its activities in this area; two national level seminars have been conducted by the ICFA-I in response to the interest resulting

from the phenomenal expansion of financial markets and the request for training programs. Representatives of the ICFA-I are visiting American

universities to obtain support from professors of finance in research efforts. An annual conference will be conducted each year on an important topic

in finance and international experts will be invited so that ideas will be generated to assist policy makers in India. Dr. Raj then introduced his

colleagues, Dr. Chandra and Mr. Yasawy. Mr. von Germeten welcomed the guests and commended them for the success of the Institute in India in a

very short time. He expressed enthusiasm on behalf of the Board for working with the Indian Institute in developing and applying their program and

learning more about the financial markets in India.

The counsel drew our attention to the letter dated 26.04.1990 at page 198 where the Chairman of the first Respondent had thanked the Appellant

for the support given by them in developing the course in the Respondent's institution. The counsel also pointed out that the first Respondent had

requested Mr. Morley, the Chairman of the Appellant to sign the charter certificates to be given to the successful candidates in their letter dated

7.5.1990 and 25.6.1990. The counsel relied on the Book ""Let There Be Light"" - The Genesis of ICFAI where it was clearly admitted that if not for the

American company, the institute would perhaps have never come up. The counsel firmly stated that all these prove that the Respondent was totally

depending on the Appellant's support.

The counsel then relied on Section 11(3) (a) of the Act and submitted that a mark shall not be registered if its use is liable to be prevented by

virtue of any law. Here, in the instant case it was the Appellant who was the prior adopter and user of the impugned trade mark and hence the

impugned trade mark was liable to be refused registration.

In fact, in the year 1990 when the application for registration was made by the first Respondent, they were aware of the Appellant's use and

hence do not qualify to be the proprietor of the trade mark as per the provisions of Section 18 of the Act.

The counsel further relied on the order of injunction granted by the High Court of Delhi in CS(OS) 210/2004 reported in 2006 (330) PTC 352. The

counsel submitted that even assuming but not admitting that the interim order will not help the Appellant in proving their case, the minutes of August

1985 will definitely help the Appellant in proving their case. The first charter was signed by Mr. Morley Chairman of the Appellant and continued to

do the same until the year 1991.

The learned senior counsel then relied on the observations of the single Judge of the High Court in another suit. The counsel also placed reliance

on the deposition of Mr. Bowman, the then President of the Appellant before the District Court, Virginia.

Finally, the counsel relied on the judgment reported in AIR 1995 SC 2372 M/s Gujarat Bottling Co. ltd. and Ors. v. Coco Cola Company and Ors.

in support of his case that it is permissible for the registered proprietor of a trade mark to permit a person to use his registered trade mark. Such

licensing of trade mark is governed by common law. The Appellant as a registered proprietor of the impugned trade marks had permitted the first

Respondent to use the registered trade mark provided it does not cause any confusion or deception among the public.

The counsel finally concluded the argument by stating that the impugned order passed was contrary to law. The well settled principles of law that

the prior right of a person is to be protected against the subsequent user has not been followed while passing the impugned order. The impugned order

ought to be set aside and the appeal be dismissed with costs.

The learned Counsel for the first Respondent submitted that the application for impugned registration was made in the year 1990 in class 16

claiming user since 1986 by which the trade mark had become distinctive. The counsel drew our attention to para 1 of the notice of opposition filed at

page 50 of the typed set and stated that the Appellants were a global non-profit organization to administer Chartered Financial Analyst / CFA

programme and exam sand to award the CFA Charter and to grant the rights to use the marks to successful candidates and they had nothing to do

with printing materials in respect of the goods for which the impugned registration application was filed. He also pointed out that the Appellant's trade

mark was not registered in India as was stated in the notice of opposition.

The counsel further stated that there was nothing global about the Appellant's business. The counsel denied the statement that the name changed

to The Institute of Chartered Financial Analysts of India from the Institute of Certified Financial Analysts in 1985 after the minutes where there was

no licence agreement. The counsel also denied the statement that permission was granted by the Appellant institution for establishing ""Education and

Testing Program"" as the institution was developed as a result of their own independent action. Mr. Morley was not a member of the Respondent's

Board of Governors till 1991.

The newspaper produced by the Appellant in proof of use are in circulation only in foreign countries and not in India. There was no minutes of

1985. The minutes are only substitutes for the meeting. The Appellant's registration outside India under No. 935504 as of 1972 has no relevance as it

was a service mark which concept was not available during that period in India.

The counsel for the first Respondent summarized his arguments as that the goods were different, the Appellant had no business in India in the year

1990; there was no licence agreement; in the minutes there is no mention of the trademark; the Respondent has not acted in bad faith; the registration

obtained in India is a service mark and not trade mark; the Appellant has not produced any document prior to 1999; there was no trans border

reputation and that the deposition of Mr. Bowman cannot be relied on. The appeal, therefore, ought to be dismissed with costs.

The learned senior counsel for the Appellant in reply stated that they were prior adopters and users of the trade mark since 1963 and relied on the

judgment of the Supreme Court in 2004 (28) PTC 585 (SC) Milment Oftho Industries and Ors. v. Allergan Inc. The counsel further stated that the

first Respondent had not denied the study material provided by the Appellant to the first Respondent. The first Respondent had not proved the user

since 1986 to 1990 though had claimed user since 1986 in the application for registration in the year 1990. The marks acquires distinctiveness only by

use which has not been proved. In fact the Respondents have not denied the 1985 minutes.

In reply to the denial of the statement that the name was changed after the 1985 minutes, the counsel drew our attention to the extract of the

meeting on 21.10.1986 at Hyderabad which was signed by the Chairman of the Respondent institution at page 190 -""After discussion it was suggested

that in the light of the strong bonds of collaboration established with the institute of Chartered Financial Analysts, USA, the institute - be renamed as

'The Institute of Chartered Financial Analysts of India.' The Board further authorized to convene Extra-ordinary General Body Meetings of the

Institute for considering amendments to the Memorandum and Articles of Association in regard to modification of the name of the Institute .

The minutes is a substitute for licence agreement. The issue as to trans border reputation is not necessary as the Appellants and the first

Respondent are known to one another. The adoption of the impugned trade marks are dishonest and the action for registration has been done in bad

faith. The counsel denied the contention that the registration in US is not relevant to the case on hand. The mark is not a certification mark.

Both the counsel have relied on number of Judgments in support of their case. Though we have not dealt with each and every judgment we have

gone into and considered them and orders are passed based on the facts of the case and principles of law.

We have heard both the counsel and have gone through the pleadings and documents and have carefully considered the same. The main issue

here in the instant case is based on the minutes dated 14.8.1985. The first Respondent had no doubt changed the name from the Institute of Certified

Financial Analysts to the Institute of Charted Financial Analysts of India after the collaboration between the Appellant and the first Respondent. The

minutes of 14.8.1985 has been signed by one Mr. V.S. Sankaran of the first Respondent and Mr. Morley the Chairman of the Appellant which reads

as "" These notes summarise and confirm the thoughts and decisions arising out of discussions between and among M/s Alfred C. Morley, Mr. N. J.

Yasaswy, Dr. Besant Raj, Dr. Prasanna Chandra and Mr. V. Sankaran, during the period August 12-14, 1985 in Bombay, Hyderabad and Bangalore,

India.

1 The ICFA (USA), now better understanding and accepting the purpose and mission of the proposed ICFA (India), is willing to assist and encourage

in a variety of ways the development and success of ICFA (India).

2 Assistance and encouragement as identified above is subject to approval of ICFA (USA) Trustees, and it is expected that the Trustee will take

action at their September 1985 meeting.

3 Details of assistance and encouragement include, but are not limited to the following

(a) Use of the ICFA and CFA initials by ICFA (India) after it has been determined by the ICFA (USA) that the admissions standards, study

programme and materials and examination process are and continue to be of the highest caliber relative to conditions and circumstances in India.

(b) Evaluation and critique of study programme and material as well as examination on an ongoing basis.

(c) Contribution of study programme material and technique as applicable.

(d) Participation in seminars and in research projects, if appropriate.

(e) Involvement in governing, study material development and related matters viz: representation on applicable committees and other bodies.

(f) The ICFA (USA) is willing to countersign the CFA certificate awarded by ICFA (India) subject to the conditions outlined in a) above having been

met.

ICFA (US) has no intention of its collaboration and other involvement with ICFA (India) generating for its unrealistic profits. However, direct cost

of assistance and encouragement as defined will be borne by ICFA (India). Such direct cost would include applicable travel to and food and lodging in

India, expense of creating and/or delivering study programme material and related documents for use by ICFA (India), and the ------ In addition, to be

negotiated is a ""Time Cost"" of ICFA (US) assistance and encouragement, possibly in the form of a minimum base amount and/or a fee per candidate

accepted by ICFA (India). Whatever is negotiated in this respect will be subject to approval by appropriate governmental authorities in India.

On a bare reading of the minutes it is clear that the word proposed ICFA (India) mentioned in the first clause shows that the said organization was

likely to come up. The same has come up and thus a change in name has taken place. That apart the use of the initials ICFA and CFA are approved

by the Appellant in clause 3 of the minutes. The Appellant was also to counter sign the certificates to be awarded to the students.

Further, in a meeting convened at Philadelphia on 10th May, 1987 in a Report the Chairman of the first Respondent Mr. Raj thanked the Board for

the opportunity to attend the meeting. He expressed appreciation for the valuable help received from the ICFA especially Mr. Morley, in enabling the

ICFA-India to accomplish much in a short time period. Dr. Raj then described the program developed in India and indicated that 6,000 students have

enrolled for first exams. The first two exams have been given and the first CF As will be awarded in 1989. due to many requests for assistance in

upgrading skills, the ICFA-India will expand its activities in this area; two national level seminars have been conducted by the ICFA-I in response to

the interest resulting from the phenomenal expansion of financial markets and the request for training programs. Representatives of the ICFA-I are

visiting American universities to obtain support from professors of finance in research efforts. An annual conference will be conducted each year on

an important topic in finance, and international expert will be invited so that ideas will be generated to assist policy makers in India. Dr. Raj then

introduced his colleague Dr. Chandra and Yasawy. Mr. von German welcomed the guests and commended them for such of the Institute in India in a

very short time. He expressed enthusiasm on behalf of the Board for working with the Indian institute developing and applying their program and

learning more about financial markets in India.

The Book titled - Let There Be Light - the Genesis of the ICFAI which was written by V. Pattabhi Ram and was published by Tata Mc Graw Hill

Publishing Company Limited was relied on by the Appellant - It is worth mentioning the wordings in chapter 2 under the title Strategic Alliance-

The Credibility Factor-

For the first time, a new educational product was being introduced in a controlled economy through private initiative. To click, such a product had to be

credible. The US association lent this credibility to the Indian programme. With no international or domestic donors to back them, this was the ICFAI's

way of convincing the Indian students and the Indian employers about the worth of the programme. This credibility - through-collaboration approach

gained teeth when the two institutes agreed that those who qualified in the Indian programme would one day receive exemptions in the US

Programme. And when Morely, genuinely believing that this should be a joint programme, decided to co-sign the Indian CF Acharters, the credibility

became total.

The Godfather Factor

The association with ICFA, gave ICFAI the opportunity to work with an international organization having 25 year standing in the education business.

ICFA would be the ICFAI's link to the outside world. For instance, within one year, in 1986, thanks to Morley, ICFAI was invited to the Asian

Securities Analysts Council (ASAC), an international confederation on financial analysts. Raj, ICFAI's chairman, attended the ASAC's annual

conference at Hong Kong. In the normal course, this recognition would not have come that fast. Similarly, Morley introduced ICFAI to the rest of the

world. ICFAI clearly looked up to ICFA as its godfather, and chose to latch on to the tail of the ICFA comet.

The Academics Factor

The collaboration, according to Raj, ""helped ICFAI spot what subjects to be taught and in what sequence, so that the programme could make sense to

the working students. ""Also, it initially used the ICFA's literature on capital markets and mutual funds to develop the Indian material. The logic was

that ""there was no need to reinvent the wheel"". Of course, where necessary, the text was to be adapted to suit the Indian scene. So, the ICFAI

pioneered the concept of ridingpiggy back onto a premier foreign educational institute. Right? Well, Wrong! In fact, here ICFAI was in distinguished

company. Many years ago in 1963, the Indian Institute of Management (IIM) was set up at Ahmedabad with a Harvard collaboration, and later at

IIM, Calcutta with the support of the Massachusetts Institute of Technology (MIT). Once the enrolments, began, it became clear that the foreign tie-

up had paid off. As Raj says ""The large response initially was due to the fact that the American Institute was collaborating with us; though over the

years, the Indian course has proved its own merit."" He is candid when he remarks, ""without the foreign association, this institute would perhaps have

never come up."" But all good things must end. And, in 1991, when the original memorandum of understanding expired, neither party felt it worthwhile

to renew it.

Based on all the above, we are of the opinion that there had been an understanding between the Appellant and the first Respondent since the year

1985 to 1991 when the Chairman Mr. Morley of the Appellant was in the organization. Under the guidance of the Chairman, the first Respondent

continued to develop the institution. The relationship continued till 1992 during which period the impugned applications for registration has been made.

In fact, the first Respondent has nowhere denied that there was no association from the Appellant to develop the institution. The only finding of the

Registrar in the impugned order that there was no licence or lease agreement and that there was no permission granted by the Appellant to the first

Respondent to use the trade marks. Thereafter the parties were trying to settle the dispute and finally on 13.1.1997 the licence agreement was

revoked. Thereafter a suit was filed. In the suit, the learned judge had observed at para 24 (reported in 2006 (33) PTC 352) AIMR and Research and

Anr. v. ICFAI and Anr.- ""For five years as described above the parties corresponded with each other and the question of user of the marks

constantly appeared in this correspondence. Prima facie, the parties were in negotiation with each other over the use of the marks. The Plaintiff's

concern, as the Plaintiffs say, was the need to maintain the highest standards of the marks and of the name of the Institute which they felt was being

diluted on account of the difference in the study material and the course contents offered by Defendant No. 1. The Defendants always acknowledged

the contribution of the Plaintiffs in establishing the institute called ICFAI and in providing the course for the designation of CFA. The Defendants,

however, deny that Defendant No. 1 projected itself as a part of the CFA. The Plaintiffs have filed the book called ""Let There be Light: The Genesis

of the ICFAI"" by one Mr. V. Pattabhi Ram which Plaintiffs claim, was published with the consent of the Defendants. The book, inter alia says that in

1984 inspired by the ICFA tag the Institute of Certified financial Analyst of India was registered as a society under the Andhra Pradesh (Telengana

areas) Public Societies Registration Act in Hyderabad. It is also mentioned in the book that ICFA was the role model for the Institute set up by Mr.

Yasawy. The book visualizes the effort of Mr. Yasawy who persuaded Plaintiff No. 2 and how eventually when I August, 1985 Mr. Morley visited

India the dream of ICFAI collaborating with ICFA became a reality. The facts written in the book ""Let There be Light- The Genesis of ICFAI"" tallies

with the allegations made by the Plaintiffs. Prima facie, the Defendants always had an eye on the designation CFA and the name Institute of

Chartered Financial Analyst and even the very first name ""The Institute of Certified Financial Analyst"" was chosen keeping in view the CFA tag. As

the collaboration ripened as indicated in the minutes of 14.8.1985 the institute could rename itself as Institute of Chartered financial analyst of India.

Thus, clearly the genesis of ICFAI lay in the licence granted by the Plaintiffs.

We, therefore, are of the view based on the above observation that the Appellant is the prior adopter and user of the trade marks and the adoption

by the first Respondent is subsequent and their adoption cannot be said to be honest and bonafide.

We also find that the first Respondent has admitted the fact that the Appellant's assistance ended in the year 1991. If that be the case, there is no

doubt that the first Respondent was conducting the programme only with the help of the Appellants.

The objection under Section 9 of the Act has been decided in favour of the first Respondent in the impugned order on the ground that the marks

are not visually and phonetically similar. The trade mark shall not be refused registration if before the date of application for registration it has acquired

a distinctive character as a result of use. In the instant case, it is seen that except for the sales figures without any certification has been given by the

first Respondent which does not prove any use. In such a case, the mark cannot be said to have acquired distinctiveness. The trade marks therefore

does not qualify for registration under Section 9 of the Act.

As regards the issue as to whether the Registry was to stay the proceedings of the opposition during the pendency of the case before the Hon'ble

High Court in a civil suit. The observation / finding of the Registrar in the impugned order´ 24.80 - Stay when applicant claiming prior user pending:

If the Defendant could establish prior user of the mark and had made an application for registration which is pending before the Registrar, the court

may stay the proceedings pending the decision for the Registrar on the application. In such circumstances the Defendant may plead also s.34.

In Edward v. Elka (1888) 5 RPC 70, an action for infringement the Defendant had alleged and it was not contradicted by the Plaintiff that the

Defendant had been using the same mark two years prior to the date of registration of the Plaintiff's mark. There was no motion to rectify the

register. The Defendant had applied for registration. Held that the Plaintiff's motion for interlocutory injunction should stand over till the Defendant's

application for registration was decided by the Registry.

The observation, in our considered opinion has been made by non application of mind. The first Respondent has not anywhere denied the

applicant's use since 1963 as claimed nor has the first Respondent claimed to be the prior user of the trade mark. The only contention was that they

adopted the trade mark since March, 1985 for which there was no evidence advanced before the Registrar or before the Board. There is no doubt as

has been observed by this Appellate Board that pending suit an opposition proceedings can be decided as suit is an independent proceeding and an

application for registration or opposition is with regard to accepting a mark for registration. In such circumstances, we do not have any hesitation in

accepting the opinion of the Registrar while passing the order.

As far as the issue under Section 11(3) (a) of the Act is to be decided, the law of passing off is very much applicable. In the case of passing off it

is the prior user who gets a valid right over the trade mark than the later user. In the case on hand, the first Respondent has not denied the Appellant's

user since 1963 and it is their admitted case that they were established as a non-profit educational society in 1984. In such circumstances, the

impugned trade mark does not qualify for registration and is prohibited under Section 11 of the Act.

The findings of the Registrar that the Appellants are not a globally well-known institute as the application for registration of the trade mark CFA

Chartered Financial Analyst under No. 2226144 in class 36 in England was refused registration is baseless. It is a well-known principle that a mark

even without registration can be used by a person. That apart on what grounds and under what principles of law applicable to that land is not made

clear in the impugned order and for what reasons the second Respondent had observed the statement is not mentioned.

The other issue is as to the licence and the use of the trade mark permitting the first Respondent to use by the first Appellant. The use of the

initials CFA was permitted by the Appellant which has been clearly stated in the minutes - Clause 2 and where it is clearly stated that the first

Respondents are proposed users of ICFA. The Genesis of ICFAI lay in the licence granted by the Appellants.

The other issue is that if the Appellant's use in India is taken into consideration, it is only from the year 1998 was the observation of the learned

Registrar which is also to be negatived as till then the Appellant was developing its programme under the trade mark through the first Respondent

under the arrangement entered into.

The next contention of the first Respondent was that no trans border reputation. In fact, the Registrar has observed in the order that even though

the Appellant had no branches in India had been conducting periodical examination in Bombay which fact has not been denied by the first Respondent.

In this context, we adopt the observation of the Single Judge in the order dated 05.04.2010 in C.S.(OS) No. 210/2004 at para 76 -

In .N.R. Dongre and Ors. v. Whirlpool Corporation and Ors. AIR 1995 Delhi 30, it is laid down that prior registration cannot defeat the rights of a

Plaintiff in a passing off action. Similarly in case of Austin Nichols and company and Anr. v. Arvind Bahl and Anr. (Blenders Pride) reported in 2006

(32) PTC 133 an injunction was issued against the Defendants despite of obtaining registration. Further, the case law relating to first use in India lays

down that the mere fact that a Plaintiff "" has not been using the mark in India would be irrelevant if it was first in the world marker"" (the Supreme

Court of India in the Milment case). The test laid down by the Supreme Court is that ""merely being first past the post in India is not enough. The

Plaintiffs were first past the post worldwide and this is of crucial importance."" In any event, the fact remains that even in India the use of disputed

trade marks by the Plaintiff is prior to that of Defendants. The Plaintiff has filed a copy of its news letter dated August, 1981 in these proceedings to

demonstrate that its first CFA examination in India was conducted in the year 1981, much prior to the licence granted by the Plaintiff to the Defendant

No. 1 in 1985.

In view of all the above observations, we are of the considered opinion that the first Respondent's adoption and use is dishonest and hence cannot

be considered to be proprietor of the trade marks under Section 18(1) of the Act.

The learned senior counsel for Appellant did not have any objection for the M.P. Nos. 87,88 and 89/10 and M.P. Nos. 90,91 and 92/10 being

allowed. Accordingly M.P. Nos. 87, 88 and 89/10 and M.P. Nos. 90,91 and 92/10 were allowed.

Having decided all the issues in favour of the Appellant, we have no hesitation in allowing the appeals by setting aside the orders dated 22.9.2008

with no order as to costs.