Delhi High Court: Sanjeev Narula, J., granted an injunction to the Law Firm ‘Singh & Singh’ in a case of trademark infringement.
I.A. 7143/2021 (under Order 39 Rule 1 and 2)
Plaintiffs filed the present application under Order 39 and Rule 1 and 2 CPC seeking protection of their mark/name ‘Singh & Singh’. The plaintiffs were aggrieved by the use of identical marks ‘Singh + Singh’; ‘Singh + Singh Lawyers LLP’ and other derivatives by defendant 1 to 5.
Founders of Law Firm ‘Singh & Singh’ coined the said term and the same has been in use since 1997.
Rajiv Nayar, Chander Lall and Sandeep Sethi, Senior Counsel for the plaintiffs submitted that in May, 2021, plaintiffs were surprised to find a post on social media using the name ‘Singh + Singh LLP’ and ‘Singh + Singh Lawyers LLP’.
With further research it was noted that the said name was being used by the husband of Defendant 3, Defendant 2 along with another partner Defendant 4 Defendant 3 used to work as an associate in plaintiff 1 firm.
Further adding to the submissions, Counsel stated that the name ‘Singh & Singh’ has been registered since 2005 in respect of legal services and has been in use since 1997. 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.
Analysis, Law and Decision
Bench prima facie opined that the facts conspicuously demonstrated that the infringing marks were identical and were being used for identical services and an identical class of customers/clients.
Plaintiff 1 has a global reputation and goodwill and is servicing clients across the globe. Court found merit in the plaintiff’s contention that nowadays legal services are being rendered across the globe through internet and electronic means and law firms such as plaintiff 1 would have a reputation not limited by geographical boundaries.
Hence, there could be a strong possibility of confusion amongst the foreign clients/law firms relating to the two marks which are predominantly identical.
“…strong likelihood that they would be led to believe that ‘Singh + Singh’ is another branch or an associate office of ‘Singh & Singh’
Adding to its analysis, Court stated that the adoption of identical mark/name by the defendant in deceptively similar colour combination on online platforms for providing legal services was fraught with mischief and did not appear to be bonafide.
In Court’s opinion, plaintiffs established a prima facie case and a balance of convenience was established in favour of the plaintiffs and they were likely to suffer an irreparable loss in case the injunction was not granted.
Therefore, till the next date of hearing, defendants, their partners/promoters, associates, family members, employees and anyone acting for and on their behalf were restrained from using the impugned 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 was 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.
Defendant 6 was also directed to suspend the domain name of ‘www.singhllp.com’ till the next date of hearing.
Matter to be listed before the Court on 23-09-2021. [Singh & Singh Law Firm LLP v. Singh + Singh Lawyers LLP, 2021 SCC OnLine Del 3059, decided on 02-06-2021]
Advocates before the Court:
For the Plaintiffs: Rajiv Nayar, Sandeep Sethi and Chander M Lall, Senior Advocates with Saurabh Seth and Tanmaya Mehta, Advocates.
For the Defendants: Divjyot Singh, Avsi Malik and Nipun Dwivedi, Advocates for D-1, 2 & 4.
Nimish Chib, Advocate for D-3 & 5.
Alipak Banerjee, Advocate for D-6 & 7.