Introduction
Every business aims for recognition, large clientele and goodwill to keep it running. This requires separate investment to achieve brand recognition which is the pillar for any successful business and considered the most valuable asset especially in this age of e-commerce. Due to the rapid technological advancements, the traditional physical boundaries between countries have become effectively redundant. This throws the spotlight on brand recognition as they no longer simply indicate or guarantee the origin of service or product, instead, they become magnets of attraction transborder.
Trademarks
Here comes the importance of Trademarks as they are concerned with brand identification. Trademarks cover a wide range of words, labels, names, signatures, headings, symbols, or device, or any combination etc., and as per the Trademark Act, 1999 (hereinafter referred to as the "Act") Trademark "means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours.”
Essentially a trademark gives protection to the proprietor or owner of the mark in the form of an exclusive right to use and to identify the goods or services or authorize another to use for payment. The owner technically has a weapon of sorts in his hand to prevent others from the unlawful use of the mark.
Nature- It is a known fact that Trademark is territorial and based on the Doctrine of Territoriality. According to this Doctrine, the reputation of a good or service does not exceed the territory of the country that grants the trademark. However, even before the emergence of the internet and the concept of e-commerce, the reputation of goods and services moved far and wide across borders, even though they were not registered trademarks in those countries specifically.
In this age, it is absurd to believe that the reputation of a good or service is contingent upon the goods or services being rendered in that place. With the globalization of trade and commerce, knowledge of services and products are available in almost every nook and corner. Thus, a product or service need not be physically dealt with in a particular region but there is awareness regarding a particular brand and what it denotes. The trans-border reputation of a trademark simply refers to the knowledge and responsiveness of the trademarked mark that is easily spread thanks to advertisements, social media sites, cinema, and so on.
Legal services, I would like to believe, has made immense progress when it comes to enlarging their client bases and providing services worldwide, kudos once again to globalization, easier norms for investments, etc., which automatically gives rise to disputes which inevitably require legal assistance. I might even call this a virtuous cycle.
Case Facts
Recently a single-judge bench of the Delhi High Court in SINGH & SINGH LAW FIRM LLP & ANR vs. SINGH + SINGH LAWYERS LLP, CS (COMM) 263 of 2021, decided on 02-06-2021] granted an injunction in a trademark infringement case. Singh and Singh had filed an application under Order 39 and Rule 1 and 2 Code of Civil Procedure, 1908 ("CPC") seeking protection of their mark/name ‘Singh & Singh’.
Arguments advanced by the Plaintiff- According to the plaintiffs, the term 'Singh and Singh' had been coined by the founder of the plaintiff’s firm and has been in use since 1997 ultimately getting it registered in 2005. Over the years the plaintiff firm had acquired quite a reputation in India and several foreign countries with their clientele hailing from Canada, the USA, Japan etc. Thus, the Plaintiffs claim international repute and recognition. In May 2021, the plaintiffs were surprised to find a post on social media under the name of ‘Singh + Singh LLP’ and ‘Singh + Singh Lawyers LLP’. Upon further research, it was found that Defendant No. 3 used to work as an associate in the Plaintiff No. 1 firm in 2010-2011, a fact admitted by her on her Facebook profile and the other defendants were using the same name in their social media accounts. It was submitted by Plaintiff that the defendants before May 2021 used to practice law individually under the name and style ‘GSC Law’ with its website ‘www.gsclaw.ca’ and ‘KSK Law’ having the website ‘www.kohlilaw.com’.
Plaintiff’s claimed infringement under Section 29(2)(c) of the Act stated that the term ‘Singh & Singh’ and ‘Singh + Singh’ are identical to each other hence there is a possibility of confusion under Section 29(3) of the Act. Furthermore, the defendants being an ex-associate adopted the impugned name in a malafide manner to reap the benefits attached to the name 'Singh & Singh' namely huge international goodwill and trans-border reputation.
Arguments advanced by Defendants- The Defendants argued that the use of the term 'Singh + Singh' was of a bona fide nature and took the defence under section 35 of the Act, "Saving for use of name, address or description of goods or services.—Nothing in this Act shall entitle the proprietor or a registered user of a registered trademark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services". It was stated that simply because ‘Singh’ is a part of the trade name of Plaintiff, the defendant is not barred from using it as it is a part of the name of Defendant, hence there was no ground for granting an injunction.
The main defence taken by the defendants was that their firm was founded in Toronto and registered with a Law Society in Ontario and their practice areas are limited to Ontario with no client in India. Emphasis was placed on the fact that the defendants were young lawyers who are just establishing their practice in Canada and any adverse order would be detrimental to their practice.
Judgement
The Court considering the contentions of the parties stated that prima facie the infringing marks are identical marks/names; are being used for identical services; and an identical class of customers/clients. The Court found merit in the contention that legal services nowadays are rendered across the globe through the internet and electronically. Furthermore, The Hon’ble Court also took note of the fact that the Plaintiff firm had a transboundary reputation and the same had been proved through records, even though trademarks primarily being territorial. "Therefore, there is a strong possibility of confusion amongst the foreign clients/law firms relating to the two marks which are predominantly identical. There is a strong likelihood that they would be led to believe that ‘Singh + Singh’ is another branch or an associate office of ‘Singh & Singh".
The Court opined that prima facie the use of marks identical/deceptively similar to the trademark would most likely cause confusion and the use of even similar colour combinations on online platforms is fraught with mischief and mala fide intention as evident from a LinkedIn post where Defendant is seen receiving congratulatory messages for the opening of an office bearing the name ‘Singh and Singh LLP’, which is, in fact, the Plaintiff No. 1’s name and the defendant does not rectify the mistake stating that the office is under the name 'Singh + Singh LLP'. The Hon'ble Court also noted the similarity in the Twitter handles of the Plaintiffs and Defendants, ‘@singh_llp’ and ‘@singhsinghllp’, respectively (along with the website of Defendant No. 1 being www.singhllp.com).
Thus, the Court concluded that the balance of convenience lies in favour of the Plaintiffs, and they are likely to suffer an irreparable loss, in case the injunction is not granted. Hence, til the next date of hearing "the defendants, their partners/promoters, associates, family members, employees and anyone acting for and on their behalf are 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 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 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."
Analysis
The above case is a clear indication that in this of technology and fast internet connectivity, the geographical boundaries have become visibly invisible, hence the nature of IPRs need to be redefined. The Doctrine of Territoriality that is applicable for most IPRs is falling behind somewhat with the Doctrine of Universality taking over due to cross-border transactions.
We all know that light travels faster than sound, but there's something that travels faster, Information. Any information, details etc., product or service is known in almost every corner of this new world without them being physically available and therefore, there is a need to have specific and distinguishable brand names to avoid confusion. The concept of infringement is enunciated under section 29 of the Act. The concept of infringement as explained under section 29 includes certain important terms like identical, deceptively similar, unfair advantage, distinctive character, reputation, identity likely to confuse better. These terms might not seem very important, but these terms have their wide individual meaning, and they tend to extend the domain of infringement to cover all the nooks and crannies giving the court wide areas of interpretation.
The human mind is a funny thing and many times we jump to conclusions by either listening or reading just one word before it is completed (Brilliant Word Association by our brain). Based on unrelated stimuli we are likely to misread words therefore one is likely to read, as already seen by the LinkedIn post, 'Singh + Singh' as 'Singh and Singh' and cause the Plaintiff's in this case to suffer irreparable loss and damage to their global reputation. Another factor that most likely enhances this confusion is autocorrecting and predictive text in computers, phones etc. The use of identical trademarks can have a more deleterious impact given there are no fixed market boundaries in today's time. Such acts of infringement ought to be nipped at the bud (through injunctions, interim measures etc.) until the matter is decided, to mitigate the loss that the Plaintiff might suffer. Therefore, as of now 'Singh and Singh' seems to be the King as they have won this battle, but will they win the war?
REFERENCES
1. LCI Team, “Transborder Reputation of Trademarks” (Lawyersclubindia2021) <https://www.lawyersclubindia.com/articles/transborder-reputation-of-trademarks-2154.asp>
2. Shrabani Rout, “Universality Territoriality Doctrine Reference Well-Known Trademarks” (Mondaq.com January 30, 2018) <https://www.mondaq.com/india/trademark/668364/universality-territoriality-doctrine-reference-well-known-trademarks>
3. Aditya Ladha, “Similar Trademark Issued for Different Items Does Not Amount to Breach of Law” (Mondaq.com January 9, 2020) <https://www.mondaq.com/india/trademark/881668/similar-trademark-issued-for-different-items-does-not-amount-to-breach-of-law>
4. (Legalserviceindia.com2021) <http://www.legalserviceindia.com/article/l65-Trademark-Protection-in-India.html>
5. Devika Sharma, “Del HC | ‘Singh + Singh’ Prima Facie Deceptively Similar to ‘Singh & Singh’: HC Grants Interim Relief to Law Firm in Trademark Infringement Case | SCC Blog” (SCC BlogJune 7, 2021) <https://www.scconline.com/blog/post/2021/06/07/law-firm-singh-singh/>