An acronym is an abbreviation made by taking the first or the initial letters of the composite words/names. For example, the acronym ‘BCI’ stands for Bar Council of India and ‘LIC’ stands for Life Insurance Corporation of India. Acronyms play an important role in branding and marketing of businesses and other commercial entities. Keeping in view the importance of acronyms that assist the people in recognising a particular brand or a product or service, the question arises whether these can be protected within the trademark framework.
The process to get an acronym trademarked begins with registering the full form of the acronym as a trademark and subsequently getting the acronym registered as a trademark. It is pertinent to note that acronyms are treated like regular trademarks and must satisfy the tests for registration and are liable to be refused for registration in accordance with the provisions of Section 9 of the Trade Marks Act, 1999 like any other trade mark. Therefore, acronyms must also satisfy the conditions like being non-descriptive, having a distinctive character, not containing any scandalous matter etc.
In India, acronyms of names of companies and institutions can be trademarked and Indian Courts have from time to time upheld the validity of acronym trademarks in various commercial suits. In March 2023, in an interlocutory application filed in the case of The Institute of Chartered Accountants of India v. The Institute of Cost Accountants of India, the Delhi High Court ordered an injunction against the Institute of Cost Accountants of India from using the acronym ‘ICAI’, which is a registered trademark owned by the Institute of Chartered Accountants of India. The plaintiff had this trademark registered with effect from March 2011 but has been using it since 1949. The institute has the ‘ICAI’ acronym registered under Class 41 for ‘Education and providing of training’.
The Court also ordered Institute of Cost Accountants of India to remove the ICAI acronym from the existing webpages, and other virtual or physical representations in which the acronym is displayed, within a period of 3 months.
The Court observed that there is a prima facie likelihood of confusion in the minds of the public regarding the use of ICAI, since the public may not be able to decide whether ICAI refers to Institute of Cost Accounts or Institute of Chartered Accountants until additional material with the full form is made available to them. The Court used the ‘initial interest confusion’ test and analysed the dispute within the scope of Section 29(3) read with Section 29(2)(c) of the Trade Marks Act, 1999 and observed that clearly ordains that where the trademarks of the plaintiff and the defendant are the same, and the goods or services covered by the marks are also identical, the Court shall presume the likelihood of confusion on the part of the public.
It is now pertinent to note that acronyms are protected to the very last letter, so any variance in even a single letter in an acronym, changes the entire significance of the acronym, leading to a different full form as well as a different entity altogether. For example, ‘BCI’ stands of Bar Council of India whereas ‘BCCI’ stands for Board of Control for Cricket in India. Thus, every single letter holds a crucial place in acronym trademarks and if there is no or minimal likelihood of confusion, similar acronyms can be allowed to be registered and used without prejudice to the other ones. If there are multiple entities with the same acronym but different full forms, the Courts consider the validity of the trademark on the ‘prior use’ principle. In 2015, the Delhi High Court in the case of Science Olympiad Foundation v. Shivalik Olympiad Foundation, observed that since both the entities are using the ‘SOF’ acronym, the test to be applied would be prior use of the mark. Since the Plaintiff had priority of use, the Court ruled in its favour.
Conclusion
Even though the Trade Marks Act, 1999 does not explicitly lay down any provisions on the use of acronym trademarks, the jurisprudence on them is developing through Court judgements. An amendment to the Trade Marks Act can go a long way in addressing a plethora of issues which come before the Courts for adjudication, due to the lack of statutory provisions offering guidance and clarity on the same.
The Courts in India have time and again upheld the validity of acronym trademarks and have also protected them from infringement, keeping them at par with regular trademarks.
Trademarks: The distinction between infringement and passing off – By Raunaq Bali