In a trademark suit filed by Singh & Singh Law Firm, the Delhi High Court has granted it interim relief against Singh + Singh LLP and said both trademarks are similar and are likely to cause confusion on the part of the public.
On June 2, Justice Sanjeev Narula granted interim relief to Singh & Singh Law Firm by restraining Singh +Singh LLP from using the disputed marks including the name/mark “Singh + Singh”, “Singh + Singh LLP”, “Singh + Singh Lawyers LLP”, singhllp.com, singhllp, @singhsinghllp, Singh-Singh-LLP, the Singh + Singh impugned logo, or any other trademark/trade name/service name/trading style or domain name or Twitter handle, LinkedIN profile, Facebook profile, logo, device, etc., which is either identical to or deceptively similar to the Plaintiffs’ mark(s) ‘Singh & Singh’, ‘Singh & Singh Law Firm LLP’, ‘Singh & Singh.com’, ‘Singh & Singh Advocates’ or any other derivatives thereof so as to result in infringement of trade mark(s), passing off, acts of unfair competition, dilution etc. for rendering legal services, consultancy services related to law, or any other cognate/allied services, at any place or in any form including in print or electronic media, online platforms etc till the next date of hearing. Singh + Singh have also been directed to suspend the domain name ‘www.singhllp.com‘.
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Singh & Singh Law Firm Petitioner’s contention
Singh & Singh moved the application under order 39 rule 1 and rule 2 of CPC to seek the protection of their mark/ name” Singh & Singh”, which they were using since 1997 and registered from 2005.
In the plaint, plaintiff not only furnished the details of trademark registration but also explains about their areas of practices and details of foreign and national accolades and awards.
They said” The lawyers of the firm are members of International Organizations as INTA, APAA, AIPPI, FICPI etc., and they attend the conferences which are held by these organizations every
year. These conferences are global and are held in various parts of the world, including USA, Canada, Germany, Australia etc.”claiming international recognition and reputation.
The counsels of Plaintiff were surprised when they 2021, find a post on social media using the name ‘Singh + Singh LLP’ and ‘Singh + Singh Lawyers LLP’ (Defendant No. 1). On further
research, they were shocked to note” that the said name was being used by the husband” of an ex-associate of Singh & Singh.
Prior to May 2021, defendants used ‘Singh’ as part of their trading style and ran their individual legal practices under the name and style ‘GSC Law’ with its website ‘ www.gsclaw.ca ’ and
‘KSK Law’ having the website ‘ www.kohlilaw.com ’.GSC Law’ with its website ‘www.gsclaw.ca‘ and that they had changed to “Singh + Singh” only in May 2021 defendants deliberately and with full knowledge of the Plaintiffs’ rights in the mark ‘Singh & Singh’ to encash upon the same.
The plaintiff submitted that ” The name ‘Singh & Singh’ and ‘Singh + Singh’ are identical to each other and there is a clear case of infringement under Section 29(2)(c) of the Trademarks Act, 1999 (in short ‘the Act’) for which there is presumption of confusion under Section 29 (3)
of the Act”.The mark had been adopted by the ex-associate’s husband” the adoption of the impugned name is deliberate, malafide and has been coined with the sole intention of encashing
upon the enormous transborder reputation and international goodwill that the mark ‘Singh & Singh’ enjoys and carries.”
Singh + Singh’s Defendant’s Contentions
The defendant counsel submits that the use of the mark ‘Singh + Singh’ by the Defendants is completely bona fide. He explains that Defendant firm is founded in Toronto, Canada, and has been registered with a Law Society in Ontario. The areas of practice of this firm do not overlap with the practice areas of the Plaintiff (Singh & Singh) firm.
He also suits that the practice is confined to Ontario and as per law, they cannot practice beyond the jurisdiction of Ontario, Canada, and in any case, certainly not in India. In these circumstances, Mr. Singh submits that since the Defendants are not servicing any clients in India, the Plaintiffs are not prejudiced by the use of the mark ‘Singh + Singh’ by the Defendants and therefore there is no ground or reason to grant an injunction.
The defendant counsel urges that they have no office or practice in India, and Singh & Singh does not have any practice in Canada, this Court does not have the jurisdiction to entertain the present suit.
Court’s order
The bench said, “Plaintiffs have established a prima facie case. The balance of convenience lies in favour of the Plaintiffs, and they are likely to suffer an irreparable loss, in case the injunction is not granted.”
The court dismissed the arguments by Singh + Singh, the facts conspicuously demonstrate that the infringing marks are identical marks/names; are being used for identical services; and identical class of customers/clients.
“Merely because the Defendants contend that they are currently practicing only in Canada, cannot be a ground to refuse the grant of injunction.” The bench observed.
The court said that ” adoption of identical mark/name by the Defendants in deceptively similar colour combination on online platforms for providing legal services is fraught with mischief and
does not appear to be bona fide”.
The matter will next heard by the court on 23rd September, 2021.
The bare text of Section 29(2) in The Trade Marks Act, 1999 is as follows:-
(2) A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of—
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
–Shweta Anand