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Judgment
Prabha Sridevan, J
The application is for rectification of trade mark No. 1315362 in class 41.
2 . The applicant claims to be the bonafide owner and user of the mark 'IIMT' in respect of education services, publication of books, journals and
educational materials since March, 2000. The applicant is also the registered proprietor of the trade mark 'IIMT' under Trade Mark No. 908166 dated
7.3.2000 in Class 16. The respondent uses the same Trade Mark on similar goods and services. This will cause confusion and deception. The
respondent's mark has not acquired distinctiveness.
3 . The applicant has been running an Institute for International Management and Technology under the mark IIMT from 2000 to April 2004. It was
operated and run by the applicant from 2004 to 2007. Institute was operated and run by their exclusive licensee. The institute is internationally
recognized, it is a centre of excellence and has core culture of innovative teaching and learning methodology. The applicant has given details of the
marketing and promotional expense from 2000 and turnover details. On 30th November, 2007, the applicant received the notice from the respondent
claiming user of the mark IIMT. The applicant gave his reply on 4th December 2007, stating Inter-alia that their mark was registered from 2000. The
respondent sent a copy of the Trade Mark registration certificate in respect of impugned trade mark.
The respondent filed a civil suit CS No. 326 of 2008 for infringement and passing off. The ex-parte injunction granted by the Hon'ble Madras High
Court was vacated by order dated 19.1.2009 accepting prior user. No appeal was filed against this. In view of this unjustified threats, the applicant is a
person aggrieved and has filed this rectification petition. The applicant has acquired proprietary rights of the mark by long, continuous uninterrupted
user. The respondent cannot claim that its mark is distinctive. It is pertinent to note that when the applicant filed for registration there was no provision
for registration of service marks under the old Act (Trade & Merchandise Marks Act, 1958). Therefore, they applied in Class 16 which was the only
applicable class. After the new Act (Trade Marks Act, 1999) came into force, the applicant has filed necessary applications under Class 41 in
application Nos.1726941 and 1726942. They are pending. The adoption of the mark by the respondent is malafide, a simple search report would have
cited the applicants mark. For all the above reasons, the appellant prays that the mark should be rectified.
In the counter statement filed by the respondent, it was claimed that it was a non profitable Education Society started under the name and style of
Institute of Certified Financial Analyst in 1984 and changed to The Institute of Chartered Financial Analyst of India in 1985 (ICFAI). It is engaged in
the business of publication of books, periodicals, instructional, educational and teaching materials and adopted IIMT for Educational Service since
1.7.2002. The respondent also referred to their turnover, sales etc. The respondent stated that the appellant is put to strict proof of the allegations
regarding malafide adoption. The respondent filed C.S. No. 326 of 2008 against the appellant before the Hon'ble Madras High Court. According to
them, there is no confusion and the rectification petition deserves to be dismissed.
6 . As evidence the respondent produced brochures and booklets to show their user from 2002. The learned counsel appearing for the applicant
produced documents to show their user from 2000 which includes advertisements, invoices, bills, receipts etc.
The learned counsel also relied on various decisions.
It is relevant to note that in CS No. 326 of 2008 the plaint filed by the respondent was rejected by the Hon'ble Madras High Court on 22.9.2010 and
the suit was dismissed.
In 2006 (33) PTC 352 (DEL) - Association for Investmen Management and Research and Anr. Vs. The Institute of Chartered Financial Analysis of
India and Anr. the mark in question was CFA. The Hon'ble Delhi High Court restrained the respondents herein from using the marks CFA, ICFA or
ICFAI. This was an interim order and was confirmed in 2010 (43) PTC 204 (DEL).
2009 5 MLJ 468 - University Grants Commission Vs. Institut of Chartered Financial Analysis of India was another matter where the respondent was
involved The relevant paragraphs are,
Regulation 3.3 is categorical that a private university established under a State Act shall operate within the boundary of the State concerned. Also,
as per Regulation 3.3.1, no off-campus centres/study centres shall be set up without the prior approval of the UGC and that of the State Governments
where the centres are proposed to be opened. In the case on hand, off-campus centres having been set up without the prior approval of the UGC and
that of the State Government, namely, Tamil Nadu, they cannot be allowed to run any longer. If such centres are allowed to continue, the future of
gullible students will be jeopardised, by way of money and time. Therefore, we have no hesitation to hold that the respondents 10 and 11 have no legal
right to run the institutions of this kind in the State of Tamil Nadu and they are hereby restrained from running such institutions.
We are of the considered opinion that irregularities and improprieties in using the educational system to the advantage of certain private institutions
will give a wrong signal to the field of education and the common man will be in peril if this kind of mushrooming of the private institutions, without
recognition, affiliation and proper grant of permission, is allowed. Therefore, we hope that the statutory bodies, such as AICTE, UGC or any other
equivalent bodies will take constructive steps to bring in appropriate Rules and regulations with stringent penal provisions to scotch all the irregular and
illegal institutions.
We are conscious of the fact that our decision is likely to affect adversely the students, but, in the interest of curbing the unabated activities of
some persons who start unauthorised educational institutions, such a hard and drastic decision has to be taken. We aspire that the Government will
also be vigilant enough so as to prevent individuals and institutions from starting unauthorised educational institutions, so that, at least, hereafter, the
students will not be trapped or lured into taking admissions in such institutions with the temptation of getting some degrees.
8 . There can be no dispute regarding the prior user of the mark IIMT by the applicant. The applicant is definitely a person aggrieved since it is
interested in removal of the trade mark. We find that this is not the only mark that the respondent has adopted malafide. There appears to be a history
of malafide adoption of marks belonging to others. In fact, the allegations regarding malafide adoption have not been traversed in the counter
statement. We are satisfied that the adoption of the mark is dishonest.
The application is allowed and the mark shall be expunged from the register. © Manupatra Information Solutions Pvt. Ltd.