A single judge bench of Justice Sanjeev Narula has granted interim relief to the Singh & Singh law firm, restraining “Singh + Singh LLP” and its partners/promoters, associates, family members, employees and anyone acting for and on their behalf from using the impugned marks including the name/mark “Singh + Singh”, “Singh + Singh LLP”, “Singh + Singh Lawyers LLP” on a trademark infringement suit moved by Singh & Singh.
In its order passed on Jun 2, the court also restrains “Singh + Singh LLP” from using the marks 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.”
The court said this is to ensure that there is no further infringement of trade mark(s), passing off, acts of unfair competition, dilution etc. for rendering legal services, consultancy services related to law, at any place or in any form including in print or electronic media till the next date of hearing.
Singh + Singh have also been directed to suspend the domain name ‘www.singhllp.com’.
Singh & Singh’s Case
Seeking the granted reliefs, Singh & Singh had moved the application under Order 39 Rule 1 and 2 of the Civil Procedure Code, in their main suit, seeking protection of their mark/name ‘Singh & Singh’, which they claimed to be using from 1997, and registered from 2005.
Aggrieved by the use of the identical marks ‘Singh + Singh’; ‘Singh + Singh Lawyers LLP’ and other derivatives, the plaintiffs not only furnished details of their trademark registration, but also gave elaborate descriptions of their areas of practice and details of foreign and national acclaim and awards. They said that the “firm’s clientele hail from different parts of the world such as USA, Canada, Japan, Australia etc,” claiming international recognition and repute.
Counsels for Singh & Singh, Sr. Adv. Rajiv Nayar, Sr. Adv. Chander Lall and Sr. Adv. Sandeep Sethi, submitted that they had learnt of the use of the name “Singh + Singh LLP” in May 2021 on social media, and “were shocked to note that the said name was being used by the husband” of an ex-associate of Singh & Singh.
They argued that prior to May 2021, the defendants had run their individual legal practices under the name and style of ‘GSC Law’ with its website ‘www.gsclaw.ca’ and ‘KSK Law’ having the website ‘www.kohlilaw.com’, and that they had changed to “Singh + Singh” only in May 2021 “deliberately and with full knowledge of the Plaintiffs’ rights in the mark ‘Singh & Singh’ to encash upon the same.“
They 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 for which there is presumption of confusion under Section 29 (3) of the Act.”
They also contended that the mark had been adopted by the ex-associate’s husband, “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 Case
Adv. Divjyot Singh, argued against the grant of interim relief, submitting that the use of the mark ‘Singh + Singh’ was completely bona fide, and that the firm was founded in Toronto, Canada and has been registered with a Law Society in Ontario. Further, that the “areas of practice of this firm do not overlap with the practice areas” of Singh & Singh.
He claimed that as Singh + Singh’s 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, “as they 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.”
He submitted that the name of ‘Singh + Singh’, was adopted with valid registration in accordance with the laws of Canada, so there was no case for grant of any injunction. He further relied upon Section 35 of the Act, contending that ‘Singh’ being part of the name of one of the Defendants, it
“entitles him to the use of the word ‘Singh’ as part of his firm name.”
Singh + Singh also argued that since 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 Decision
Dismissing the arguments by Singh + Singh, the bench took the the prima facie view that the infringing marks are identical marks/names; are being used for identical services; and identical class of customers/clients and that, “Merely because the Defendants contend that they are currently practicing only in Canada, cannot be a ground to refuse the grant of injunction.”
The court took note of the fact that Singh & Singh’s law practice is not confined to India, they have a “global reputation and goodwill” and are “servicing clients across the globe.”
The Court also said it found prima facie merit in the contention that, “Nowadays legal services are rendered across the globe through internet and electronic means. In this internet-driven world, law firms such as the Plaintiff No. 1 would have a reputation which is not limited by geographical boundaries. Therefore, there is a strong possibility of confusion amongst the foreign clients/law firms relating to the two marks which are predominantly identical.“
Therefore it reasoned that the adoption of identical mark/name by the Defendants is deceptively similar and that the colour combination on online platforms for providing legal services, “is fraught with mischief and does not appear to be bonafide.”
With these observations, the court ruled in favour of Singh & Singh.
