Recently, in what appeared to be a rather conspicuous case of identical names, the Delhi High Court temporarily restrained the Canada-based law firm, ‘Singh + Singh Lawyers LLP’ (‘S&S Canada’) from infringing the trademark of the reputed Indian law firm, ‘Singh & Singh Law firm LLP’ (‘S&S India’). ‘Singh’ is not only an extremely common surname in India, it is also prevalent among legal practitioners. Expectably, this was not the first time it featured in a trademark dispute for legal services. In 2014, S&S India had sued Singh & Associates, another reputed law firm, for using the name. Hon’ble Justice Endlaw in his interim judgment had undertaken in depth psycholinguistic analysis of the likelihood of confusion and ordered the latter firm to use its name by adding the name of the founder with it (discussed here). The dispute was settled amicably between the parties in 2016.
Similarly, the present dispute also focuses on the deception of S&S India’s foreign clients who might mistake S&S Canada as the former, or its associate. In this post, I will look at the various issues that the court did and did not deal with, in granting interim relief.
S&S India is an Indian law firm practicing in IP, IT, technology, media & entertainment and other areas of law under the ‘Singh & Singh’ name since 1997. The name has been a registered as a trademark since 2005. They claimed that till May 2021, S&S Canada operated through separate individual practices under the names of ‘GSC Law’ and ‘KSK Law’ in Canada, but had now adopted the name ‘Singh + Singh’. They argued that one of S&S Canada’s partners is an ex-associate of S&S India and the wife of a current partner at the Defendant firm. Insisting that their clientele extends beyond borders to US, Japan, Australia and Canada, S&S India accused S&S Canada of infringing their trademark under Section 29(2)(c) of the Trade Marks Act.
S&S Canada argued that they were a law firm registered and operating in Toronto, Canada. They had no practice beyond Canada, certainly not in India, and that of the two partners of the firm, one was a permanent resident and the other, a citizen of Canada. Importantly, they additionally sought refuge in Section 35 of the Trade Marks Act, which restricts the rights of a registered trademark holder, by preventing them from interfering with the bona fide use of their own name in course of trade.
The court noted the predominantly identical names of the firms, identical legal services provided and the identical class of customers. It observed that although S&S Canada was currently practicing in Canada only, S&S India’ reputation and goodwill was global and, in an internet-driven world, reputation could not be confined to geographical boundaries. S&S Canada’s significant online presence, the similarity of the colour combination of the logos in addition to the identical names pointed towards a strong possibility of confusion between the two. The court was thus convinced that a prima facie case existed in favour of S&S India.
It is important to note that S&S Canada had not filed a written statement, but the interim injunction was granted nonetheless. Moreover, the court explained at length, why the prima facie case exists, but did not reason why the other two factors necessary for the grant of an injunction – balance of convenience and risk of irreparable injury, were fulfilled. As has been emphasized earlier on this blog, courts have often foregone the need to expound how all three factors are fulfilled. This dilutes the position of interim injunctions, which are exceptional remedies granted to confer immediate justice only when not doing so would seriously jeopardise it. As it turns out, the court probably should have reconsidered granting the injunction in the absence of S&S Canada’s written statement filed as there seem to be issues that required a greater consideration.
Online Presence and Jurisdiction
The court did not delve into the question of jurisdiction at all, but this issue may assume importance later in the case as the Defendant firm claims to be registered and operating in Canada. As Divij has explained before, here, here, and here, the Delhi High Court (‘DHC’) has an inconsistent record in determining how jurisdictional principles are to be applied in case of online transactions. In Banyan Tree v. Murali Krishna Reddy, Section 20 of the CPC was read to require the plaintiff to show that the defendant had ‘purposely availed’ itself by specifically targeting consumers from the jurisdictions of the forum court. In contrast, in WWE v Reshma Enterprises, it ruled that even the availability of transactions via internet in the forum state is equivalent to having physical shops within its territory, and thus establishes jurisdiction. While S&S Canada had argued that they do not offer services in India, their active presence on social media means that the ultimate decision may turn on the basis of the stance that DHC adopts on the question of jurisdiction.
Transborder Reputation and Foreign Clientele
S&S India had claimed that the global practice and long held goodwill of the ‘Singh & Singh’ mark had given it transborder reputation, which merited protection. The transborder reputation doctrine, recognised by the Supreme Court in the Whirlpool decision, is one associated with the protection of well-known trademarks, whose international reputation may have ‘spilled over’ to even those markets that they may not necessarily have operations in. However, S&S India here did not specifically plead that theirs is a well-known trademark.
Admittedly, confusion among foreign clients is a real problem, and possibly more likely than among Indian clients. As Justice Endlaw observed in the 2014 decision, ‘Singh’ might be a common name in India, but unlike Indian clients, foreign clients are unlikely to know this and exercise caution, thus risking association with the wrong firm. But in that decision, both parties operated from India. Here, S&S India sought protection in India against a firm that strictly operates in a foreign jurisdiction. Thus, there appears to be a problem – solution mismatch. The injunction is directed at preventing confusion among ‘foreign clients and law firms’, presumably in Canada, who might mistake S&S Canada as an associate of S&S India. However, it is being issued in India, where there is no actual operation. Since trademark laws are ‘territorial’ and not global in nature, the injunction is unlikely to have any real effect in preventing confusion among potential foreign clients.
As far as Indian consumers are concerned, since S&S India’s trademark is registered in India, one would think there is no need to invoke the transborder reputation doctrine to begin with. Unless a parallel infringement suit is being brought in the relevant jurisdiction where the Defendant operates – in case of which, invoking the well-known trademark and transborder reputation doctrine in that jurisdiction would appear sensible – it is difficult to see how any real harm is prevented.
Bona fide Use of Proprietor’s Own Name
Section 35 allows a person using their own name or the name of their place of business in good faith, to do so, without being affected by the rights of a registered trademark owner. The right in this provision has been recognized as an extension of the fundamental right to carry out any trade or business under Article 19(1)(g) by the Karnataka High Court in Somashekar P Patil v. D V G Patil. In the authoritative decision of Precious Jewels v. Varun Gems, DHC observed that the term ‘bona fide’ governs the entire provision such that permissibility of the use is hinged on whether it is made in good faith. It is an honest use if it is done without the intent to deceive consumers or freeride upon another proprietor’s goodwill. In the present case, although S&S Canada pleaded Section 35, the judgment surprisingly makes no mention of the name itself that, according to S&S Canada, entitles them to use the Singh surname. Additionally, the sudden change from the patently dissimilar names of GSC Law and KSK Law to ‘Singh + Singh’, heavily weakens the claim of bona fide use. That one of the Defendant firm’s partners is the spouse of a former employee of the Plaintiff, further favours the possibility of mala fide intent to deceive clients by posing as the Plaintiff firm. Considering the Plaintiff’s operations expand to Canadian clientele, the court has rightly noted that the Defendant could very easily be mistaken as an associate of the former in the country.
In another important decision, Goenka Institute of Education v. Anjani Kumar Goenka, DHC had confined the application of Section 35 to the use of full names only, and when done by a natural person as opposed to a legal entity which may select a different name. It followed the reasoning in Dr. Reddy’s Laboratories Ltd. v. Reddy Pharmaceuticals Ltd., explaining that this is to prevent persons from encashing the goodwill of another individual with the same surname who had used it as a trademark and acquired distinctiveness. Not only is ‘Singh + Singh’ nearly identical to ‘Singh & Singh’, it also fails to meet the full name requirement and happens to be used by an LLP rather than a natural person. Therefore, there seems to be an extremely weak case of defence, if at all possible, under Section 35.
Unlike Justice Endlaw’s judgment, this one did not delve very deep into the question of confusion – possibly because in this case the names used are nearly identical. Although the substantive questions on infringement seem firmly positioned against the Defendant, it is important to question why the interim injunction, an exceptional remedy, was granted without waiting for S&S Canada to file a written statement when the name-change only happened a month back. This is all the more important considering the issue of jurisdiction was not explored at all, and the order was passed without properly reasoning how all three factors necessary for relief were fulfilled.