09 Jun 2021

SINGH & SINGH LAW FIRM LLP & ANR. Vs. SINGH + SINGH LAWYERS LLP & ORS.

INTRODUCTION:

The Plaintiffs have filed the instant application under Order 39 Rule 1 and 2 CPC in the suit seeking protection of their mark/name ‘Singh & Singh’. The Plaintiffs are aggrieved by the use of identical marks ‘Singh + Singh’; ‘Singh + Singh Lawyers LLP’ and other derivatives, by Defendant Nos. 1 to 5.

 

PLAINTIFF’S ARGUMENTS:

Plaintiff No. 1’s firm “SINGH & SINGH LAW FIRM” working since 1997 with the Firm name being coined by its founders.  It has over the years of its functioning, expanded into several branches of law, in various aspects and due to that have enormous acclaim and fame in India as well as in Australia , USA, Canada, Japan etc. One fine day plaintiff found out through a Social media post where name “SINGH +SINGH” was used by Defendant No. 4. Defendant No. 3 who used to work as an associate in the Plaintiff No. 1 firm in 2010-2011, which can be administered from their Facebook profile. And earlier they didn’t used the same trading name and style but in May 2021 they switched to SINGH+SINGH deliberately and with full knowledge of the fact that it’s been in use since 1997 and duly registered successfully in 2005 .

 

DEFENDANT’S ARGUMENTS:

Defendant’s Claim that their firm namely SINGH+SINGH is founded by Defendant Nos. 2 and 4 in Toronto, Canada and has been registered with a Law Society in Ontario and are bound by their Jurisdiction and cannot practice in India. They also claim to the fact that their practice area and services offered are completely in contrast with that of Plaintiff’s hereby causing no overlapping as such. A strong reliance on Section 35 of the Trademark Act to contend that ‘Singh’ being part of the name of Defendant No. 2, entitles him to the use of the word ‘Singh’ as part of his firm name. Also they deny the jurisdiction of the court to decide this case as to the fact that their Practice lays solely in Canada and Ontario and not in India and hence convinces for no injunction to be passed as such.

 

ANALYSIS:

Section 29(2) (c) in The Trade Marks Act, 1999 which talks about the “similar identity” with the mark and the services offered is likely to cause a confusion or Deception for that matter to portray to the public that it has a certain connection, association or is directly linked with that of Registered Trademark to in a way either Transfer the goodwill of that Firm or to reflect it as a Sub Branch of that reputed firm. So this can be termed to be a Prima Facie case of Infringement under Section 29 of the Act.

An Identical Trademark is such where the essential characteristics which helps in differentiating a trademark are so insignificant or have been elapsed so making a layman of ordinary understanding unable to distinguish between the two marks. This has happened in the above mentioned case as well where there is a strong likelihood of the fact that “SINGH+SINGH” is an associate office or sub branch of “SINGH&SINGH” and is likely to cause confusion in the minds of the clients as well. There is a Structural, Visual and Phonetically similarity between both the marks with same color Combination making it reasonable to cause confusion.

COURT HELD:

Court considered the fact that Plaintiff’s firm being highly reputed with international clients, awards, memberships and International Participation therefore their goodwill and reputation is not hindered by geographical boundaries and is serving the 21st Century which is an Internet Driven world hence serving and known via Physical and Virtual Modes.

 

ORDER:

Refrained and Restricted the Defendants from using the impugned marks, logos, domain name, or any such method or trade style which results in infringement, Unfair Competition, Passing off or Dilution in any manner. Suspension of domain name is strictly asked for with compliance of the same in a week’s time.