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.
2. The suit has been filed by the plaintiff for permanent injunction against the defendant 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 plaintiff’s mark as a well-known trade mark.
3. It is averred that the plaintiff is a non-stock corporation incorporated under the laws of the Commonwealth of Virginia, USA having its registered office at 915 East High Street, Charlottesville, VA 22902 United States of America. 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 (hereinafter, “the Investment Professionals”).
4. It is the case of the plaintiff, it first conducted in India the CFA examination in 1981. It is also stated that the plaintiff is the successor-in-title and interest to the Institute of Chartered Financial Analysts (ICFA) that was founded in 1959 by the Financial Analysts Federation (FAF) that was incorporated in 1962 in Charlottesville, Virginia, USA with the objective of developing and administering a certification program for investment professionals, where under qualified candidates who pass three levels of examinations and meet other experience and professional standards requirements are awarded the right to use the Chartered Financial Analyst or CFA designation. Established in 1986 under the name Financial Analysts Programs, the plaintiff changed its name to Association for Investment Management and Research (AIMR) in 1990. In 1990, ICFA and FAF combined and became subsidiaries of the plaintiff. The plaintiff then entered into a co-operative operating agreement with ICFA and FAF, where under the plaintiff was granted the exclusive license to administer the CFA certification program worldwide, including in India. With effect from June 1, 1999, ICFA merged with and into the plaintiff 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 the plaintiff. With effect from May 2004, the plaintiff underwent a further change of name to ‘CFA Institute’ which is the current name under which it is known today.
5. It is the case of the plaintiff that the marks ‘Chartered Financial Analyst’ and ‘CFA’ were first coined and used internationally in 1963. The ‘CFA’ and ‘Chartered Financial Analyst’ designations are recognized worldwide as symbols of high integrity and professional excellence by investment professionals, employers, educators, regulators, government bodies and agencies, and the public.
6. It is averred that candidates who seek the CFA charter from the plaintiff must pass a series of three six-hour examinations, covering, inter alia the fields of accounting, economics, securities analysis and asset portfolio management, and must have at least four years of acceptable work experience as a financial analyst. Finally, candidates must demonstrate their good character and integrity by submitting three character references, and must comply at all times with the Code of Ethics and Standards of Professional Conduct of the plaintiff. Upon successful completion of the plaintiffs’ rigorous application and examination program, candidates are awarded the right to use the professional designation ‘Chartered Financial Analyst’ or ‘CFA’. The ‘CFA’ and ‘Chartered Financial Analyst’ designations are recognized worldwide as symbols of high integrity and professional excellence by investment professionals, employers, educators, regulators, government bodies and agencies, and the public. Individuals who have been granted the CFA charter and the right to use the CFA Marks are recognized as having achieved an unparallel level of education and knowledge in the fundamental principles of financial analysis.
7. It is the case of the plaintiff that it currently has a membership of over 146,700 investment professionals in 140 countries (all of which periodically receive materials branded with the CFA trademarks), including more than 110,000 CFA charter-holders. Specifically in India, the Plaintiff conducted the first CFA examination in 1981 in Mumbai. In India the exam is offered at test centres located in various cities. It is also stated that the plaintiff has a fast-growing membership and candidate base outside North America, especially in Asia including India. Indeed, a June 2017 press clipping indicated that 188,915 candidates worldwide registered for Level I, II and III June 2017 CFA exams in 91 countries. This represents a 9 percent increase in registrations compared to June 2016.Regionally, the Asia Pacific region continues to be the largest source of candidates with 48 percent of the total registered for the June 2017 exam coming from the Asia Pacific region. In India around 1.87 lacs students enrolled for the CFA program examination in India for the period 2006 to 2017. However, due to the rigor of the exams, only a small percentage of candidate worldwide complete all the requirement to obtain the CFA designation. Currently, there are 2204 charter-holders residing in India. Additionally, plaintiff has 20 societies across Asia, including Indian Association of Investment Professionals doing business as CFA Society India with approx. 1,938 members established in April 2005.
8. It is averred that plaintiff today holds all rights, benefits and interests in connection with an arising out of the CFA certification program including all intellectual property rights therein.
9. It is the stand of the plaintiff that it is the exclusive proprietor of numerous CFA-formative marks, including CFA, C.F.A., CFA Digest, CFA Institute, CFA Society and Chartered Financial Analyst. It is also stated that CFA Marks are registered in the United States and dozens of other countries and most of these marks have been successfully used in over 200 countries for a number of years.
10. The plaintiff has also setout details of its trademark registration for the mark ‘CFA’ and / or pending applications in respect of various CFA Marks, including the marks ‘CFA Institute’ and ‘Chartered Financial Analyst’, ‘CFA logo’ in various classes of goods and services relevant to its CFA certification program, in India, as follows:
