A single judge bench of Judge Sanjeev Narula granted interim relief to the Singh & Singh law firm, prohibiting “Singh + Singh LLP” and its partners / promoters, associates, family members, employees and anyone acting for and on their behalf to use the disputed trademarks, including the name / trademark “Singh + Singh”, “Singh + Singh LLP”, “Singh + Singh Lawyers LLP” in connection with an infringement action of trademark brought by Singh & Singh.
In its June 2 order, the court also banned “Singh + Singh LLP” from using the singhllp.com, singhllp, @singhsinghllp, Singh-Singh-LLP, the disputed Singh + Singh logo, or any other trademarks. / trade name / service name / trading style or domain name or Twitter handle, LinkedIN profile, Facebook profile, logo, device, etc., “which is either identical or falsely similar to the mark (s) of the plaintiffs ‘Singh & Singh’, ‘Singh & Singh Law Firm LLP’, ‘Singh & Singh.com’, ‘Singh & Singh Advocates’ or any other derivative thereof -this. ”
The court said it was to ensure that there is no more infringement of trademark (s), deceptive marketing, acts of unfair competition, dilution, etc. in print or electronic media until the next hearing date.
Singh + Singh have also been ordered to suspend the domain name “www.singhllp.com”.
The Singh & Singh case
Seeking to obtain the remedies granted, Singh & Singh had filed the claim under Order 39, Rules 1 and 2 of the Code of Civil Procedure, in their main action, seeking protection of their trademark / name “Singh & Singh” , which they claimed to use since 1997, and registered from 2005.
Damaged by the use of identical brands “Singh + Singh”; “Singh + Singh Lawyers LLP” and other derivatives, the plaintiffs not only provided details of their trademark registration, but also gave detailed descriptions of their areas of practice and details of acclaim and awards foreign and national. They said the “The company’s customers come from different parts of the world such as the United States, Canada, Japan, Australia, etc. ” claiming international recognition and fame.
Advice for Singh & Singh, Sr. Adv. Rajiv Nayar, Sr. Adv. Chander Lall and Sr. Adv. Sandeep Sethi, said he learned of the use of the name “Singh + Singh LLP” in May 2021 on social media, and “were shocked to find that the said name was used by the husband“from a former partner of Singh & Singh.
They argued that prior to May 2021, the defendants had operated their individual law firms 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 only changed to “Singh + Singh” in May 2021 “deliberately and with full knowledge of the plaintiffs’ rights to the ‘Singh & Singh’ trademark to cash it.“
They argued that, “The name ‘Singh & Singh’ and ‘Singh + Singh’ are the same and there is a clear case of infringement under Section 29 (2) (c) of the Trademarks Act 1999 for which there is a presumption of confusion under section 29 (3) of the Act.”
They also claimed that the brand had been adopted by the ex-partner’s husband, “With the sole intention of profiting from the enormous cross-border reputation and international goodwill enjoyed and carried by the ‘Singh & Singh’ brand.”
Singh + the case of Singh
Av. Divjyot Singh, opposed the grant of interim relief, arguing that the use of the “Singh + Singh” trademark was in good faith and that the firm was founded in Toronto, Canada, and has been registered with an Ontario Bar. In addition, that the “The practice areas of this firm do not overlap with the practice areas” by Singh & Singh.
He asserted that, as Singh + Singh’s practice is limited to Ontario and as per the law, they cannot practice beyond the jurisdiction of Ontario, Canada, and in any case, certainly not in India, “As they do not serve any clients in India, the plaintiffs are not harmed by the use of the mark” Singh + Singh “by the defendants and there is therefore no ground or reason to grant an injunction.”
He argued that the name “Singh + Singh” was adopted with a valid registration under the laws of Canada, so that there was no case for the grant of an injunction. He also relied on section 35 of the Act, asserting that “Singh” being part of the name of one of the defendants, he
“entitles him to the use of the word ‘Singh’ in his business name.”
Singh + Singh also argued that since they do not have an office or practice in India and Singh & Singh does not have a practice in Canada, this Court has no jurisdiction to hear this matter. action.
Rejecting Singh + Singh’s arguments, the court found at first glance that the infringing marks are identical marks / names; are used for identical services; and identical class of clients / clients and that, “The mere fact that the defendants argue that they currently practice only in Canada cannot be grounds for refusing to grant an injunction.”
The court took note of the fact that Singh & Singh’s practice of law is not limited to India, they have a “World reputation and goodwill” and are “serving customers around the world.”
The Court also stated that it found the assertion that, “Today, legal services are provided around the world through the Internet and electronic means. In this internet-driven world, law firms like Applicant # 1 would have a reputation that is not limited by geographic boundaries. Therefore, there is a strong possibility of confusion between foreign clients / firms regarding the two brands which are mostly identical.“
Therefore, he considered that the adoption of an identical mark / name by the defendants is deceptively similar and that the combination of colors on online platforms for the provision of legal services, “is fraught with evil and does not appear to be bona fide.”
With these submissions, the court ruled in favor of Singh & Singh.