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Judgment
S. Usha, J
1 . All the four rectification applications are for the removal or rectification of the trade marks ""CPA"" under No. 1042276 in class 9, ""Certified Public
Accountant"" under No. 1042277 in class 9, ""CPA"" under No. 1374456 in class 41 and ""Certified Public Accountant"" under No. 1374457 in class 41
respectively from the register of Trade Marks as per the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act).
2 . The applicant herein is a private limited company incorporated in the year 1997. They are associated with Becker Professional Review USA for
the US Certified Public Accountant (CPA). The term CPA and its expanded form ""Certified Public Accountant"" are generic term used by various
bodies to administer the profession of qualified accountants in their respective countries. The CPA is a world class professional education program for
leadership career in finance, accounting and business and is administered by various professional bodies in various jurisdictions.
The American Institute was first to coin and use the designation ""Certified Public Accountant"" and ""CPA"". Their predecessors have a history going
back to 1887 when the American Association of Public Accountants was formed. In 1916, the American Association of Public Accountants was
succeeded by the Institute of Public Accountants which changed its name to American Institute of Accountants in 1917 and remained so with 1957
when it adopted the current name American Institute of Certified Public Accountants.
4 . In the United States CPA is a statutory title of qualified accountants who have passed the Uniform Public Accountant Examination set up by the
(AICPA) and administered by the National Association of State Board of Accountancy (NASBA). The candidates must have met additional state
education and experience requirements for certification as a CPA in last US Federal States. Only CPA's who are licensed are able to provide public
attestation auditing and opinion of financial statement. The exception to this rule are the States of Arizona, Kansas, North Carolina and Ohio, where
the CPA designation is restricted.
CPA Australia had its origins in a number of professional accounting associations that were established in Australia in 1880's and 1890s and the
first two decades of 1900s. One of these was the incorporated Institute of Accountants, Victoria which was established as a result of a meeting of 80
practicing accountants in April, 1886. Their aim was to form an association with others of the profession that would increase its standing in the eyes of
the public. This Victorian Institute was incorporated as a company under the Victorian Companies Act in 1887. Its membership was open to all
accountants. Its services was extended to all states and in 1921 its name was changed to Commonwealth institute of Accountants (Commonwealth
Institute). The formation of the Victorian Institute was followed in July 1894 by that of the Federal Institute of Accountants also incorporated in
Victoria. Its constitution provided for the inclusion of accountants and auditors. Both these societies conducted examinations to determine eligibility for
membership.
6 . In 1910 the third body ought to be absorbed into the Australian Society of Accountants, the Association of Accountants of Australia was
established in New South Wales. Its membership extended to all other states. Its aim was more specifically for commercial accountants who are
constitutionally required to make up two-thirds of the membership. In 1920s two other significant accounting bodies were formed namely Australasian
Institute of Cost Accountants and the Institute of Chartered Accountants in Australia.
7 . In 1952, the Commonwealth Institute and the Federal Institute decided to merge into the Australian Society of Certified Practicing Accountants
which changed its name to CPA Australia in 2000. CPA Australia represents the finance, accounting and business profession, promoting the CPA
designation locally and internationally, delivering and developing long-life learning and knowledge to members and anticipating their needs in a changing
world.
Besides CPA, the designation offered by AICPA and CPA Australia, there are other bodies in various countries which administered the CPA
designation locally. The International Federation of Accountants, a global organization for the accountancy profession works with affiliates in over 123
countries to protect public interest by encouraging high quality practices by the world's accountants. On its websites, a list of 157 approved institutes is
given and against India, the entries are the Institute of Chartered Accountants of India and the Institute of Costs and Works Accountants of India.
The respondent herein had instituted a Suit bearing C.S. No. 777 of 2008 against the applicant herein for permanent injunction restraining them from
infringing the trade mark and for passing off before the Madras High Court, based on the impugned registrations. The applicant therefore being
aggrieved have filed this rectification application on these grounds that :
a) the registrations are made without sufficient cause and are not to remain on the register.
b) the entry made is by defect/by reason of an error and therefore liable to be rectified.
c) the designation CPA and this expanded form certified public accountant are generic terms. The CPA designation is a world class professional,
educational program for leadership careers in finance accounting business and this cannot be appropriated as trade mark in the name of a single
person under Section 36(2) of the Act and
d) the impugned registration is in violation of Section 9 of the Act, and Sections 11 and 18 of the Act.
Therefore the impugned registration ought to be cancelled/removed from the register of the trade marks.
The respondents though entered appearance through their counsel had sought time to file their counter statement on 10.06.2010 but had neither
filed further extension nor had they filed their counter statement. On the date of hearing as there was no representation on behalf of the respondents,
they were therefore set ex-parte and we proceeded further to hear the applicants counsel. The learned counsel re-iterated whatever were stated in
the application for rectification.
1 1 . We have heard and considered the arguments and have gone through the pleadings and documents.
The applicants are a person aggrieved by the Civil Suit filed by the respondents herein for an injunction restraining them from infringing the
respondents trade mark ""CPA"". The applicants are not able to carry on their services lawfully because of the respondents mark on the register.
Therefore the applicants are person aggrieved and have filed this application for registration.
1 3 . The respondent though had not filed their counter statement nor had they appeared before use, we had the copy of the Plaint filed in C.S. No.
777 of 2008 before the Hon'ble High Court of Madras placed before us by the applicant along with the application for rectification. The respondents
have based their suit on the submission that they are a well known institution engaged in the business of imparting knowledge for students in concepts
of accounting, auditing, taxation, business law and allied laws and conferring designation of Certified Public Accountants (CPA) who have
successfully completed the course. If that be the case, it is a course and a person cannot claim to have any monopoly over that word either as CPA or
the abbreviated term Certified Public Accountants.
The applicants are not claiming that to be their trade mark, it a course as already stated which is being conducted by the applicants. The
respondents having obtained registration are restraining others from using the word CPA.
The respondents in no case can claim any exclusive right over the word CPA or Certified Public Accountant. We therefore think it proper to
remove the trade marks from the register of Trade Marks.
Accordingly, the application for rectification is allowed with a direction to the Registrar of Trade Marks to remove the trade marks ""CPA"" under
No. 1042276 in class 9, ""Certified Public Accountant"" under No. 1042277 in class 9, ""CPA"" under No. 1374456 in class 41 and ""Certified Public
Accountant"" under No. 1374457 in class 41. No order as to costs.