Case Law Details
CFA Institute Vs Brickwork Finance Academy (Delhi High Court)
Conclusion: High Court refused to grant an injunction against the Banking Financial Analyst (BFA) for the alleged infringement of Chartered Financial Analysts (CFA) registered mark as the class of customers who were likely to avail/pursue the courses of the either CFA or BFA would be capable of differentiating between the two programs before enrolling for their preferred course and any injunction granted should have bearing on every mark with suffix ‘FA’ which was impermissible.
Held: Assessee was a non-stock corporation incorporated under the laws of the Commonwealth of Virginia, USA. It was established to serve as a global membership organization of financial analysts, portfolio and investment manager and other similar investment professionals, educators and supervisors thereof. Assessee had filed the suit for permanent injunction against the Brickwork Finance Academy (BFA) and its agents from infringing its trade marks, passing off, unfair trade practice, delivery-up of materials/products, damages as well as to declare the assessee’s mark as a well-known trade mark as there was similarity or likelihood of confusion between the marks ‘CFA’ and ‘BFA’. BFA held that there was a significant difference in the courses / programs offered by assessee as it’s program was focused on Investment Management, Credit Management and Risk Management whereas, the program of assessee was aimed at mastery towards investment analysis and decision making skills. It was held that the courses offered as CFA and BFA program were certification courses, aimed at candidates interested in financial/investment services, who have at least completed their under-graduation, both with a different course structure. Any prospective candidate who seeks to pursue CFA program, owing to the difference in curriculum/course structure, professional designation, acceptance at various organizations etc., in normal course would not confuse the same with the course offered as ‘BFA’ by Brickwork. Prima-facie the class of customers who were likely to avail/pursue the courses of the either assessee or Brickwork would be capable of differentiating between the two programs before enrolling for their preferred course. Also, ‘Finance Academy’ being a generic combination and there may be number of institutions with the appellation Finance Academy or containing its abbreviation ‘FA’, any injunction granted should have a bearing on those usages/institutions.While doing an organic online search in Google, being a popular search engine, with the keywords ‘Finance Academies’, to find out finance academies, if any, conducting educational/certification programs/exams, the organic search returned the names of two academies specifically containing the combination ‘Finance Academy’ namely IFA-Indian Finance Academy and Pioneer House Finance Academy along with various other institutions. The abbreviation of the former being IFA, surely any finding that ‘BFA’ is deceptively similar to ‘CFA’ shall have a bearing on ‘IFA’ as well. In fact, it should have a bearing on every mark with suffix ‘FA’. Thus, the suit was dismissed.
FULL TEXT OF THE HIGH COURT ORDER /JUDGEMENT
1. By this order I shall decide two applications bearing I.A. 2460/2018 filed by the plaintiff under Order XXXIX Rule 1 and 2 read with Section 151 of CPC as well as I.A. 14173/2018 filed by the defendant under order XIIIA read with Section 151 of CPC seeking a summary judgment against the plaintiff.
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