Delhi-based IP firm Singh amp Singh sues Singh amp Associates for infringement and passing off Accuses Singh amp Associates of using deceptively similar name

Delhi-based Intellectual Property firm, Singh & Singh, Advocates has filed a Civil Suit before the Delhi High Court against another law firm called “Singh & Associates”. The petiton alleges that Singh & Associates has been using a name, which is deceptively similar to the mark and name of Singh & Singh, Advocates..Delhi-based Intellectual Property firm, Singh & Singh, Advocates has filed a Civil Suit before the Delhi High Court against another law firm called “Singh & Associates”. The petiton alleges that Singh & Associates has been using a name, which is deceptively similar to the mark and name of Singh & Singh, Advocates. As per Singh & Singh, this is an attempt to capitalise on the goodwill generated by the firm. Advocate Pratibha M. Singh (the Plaintiff), who is the managing partner of Singh & Singh, arrayed as sole “proprietress” of the firm, has instituted Civil Suit No. 1173 of 2012 against Singh & Associates which was founded by Manoj K Singh (the Defendant), who is the Managing Partner and sole proprietor..The plaint, a copy of which is with Bar & Bench, states that the cause of action first arose in October, 2010 when the Plaintiff’s notice was brought to an article written by two lawyers of Singh & Associates. The subject matter of the article was two patent cases handled by Pratibha Singh’s firm Singh & Singh and was published in an international magazine. Pratibha Singh immediately cautioned Manoj Singh against using the name “Singh & Associates”, and also requested the Defendant firm not to write about cases handled by her..The Defendant firm replied stating that it is specifically represented as “Singh & Associates”. Furthermore, Manoj K Singh of the Defendant Firm, also allegedly assured the Plaintiff that his firm would not indulge in misrepresentation of any kind. Pratibha Singh claims that “surprisingly” the representative of the Defendant firm acknowledged that confusion is possible as “newer law firms” use names similar to names of “reputed firms”..However, things did not end there. A few months later, Pratibha Singh came across various instances leading to the conclusion that Manoj Singh was in fact, not only indulging in misrepresentation but also making “unsolicited approaches to the foreign associates and clients” of the Plaintiff’s firm. Furthermore, the plaint states that Manoj Singh’s firm has “time and again changed the logo of the mark to make it look like the Plaintiff’s”..The allegations in the plaint are supported by the fact that “Singh & Singh” is a registered trade/service mark claiming usage since 1997 while that of Manoj Singh’s Singh & Associates is a registered trademark and claims usage since 2002..Pratibha Singh also argues that the Plaintiff’s office under the mark “Singh & Singh” “has acquired immense popularity and goodwill” and any use of identical or deceptively similar mark/name to that of Plaintiff’s office mark/name would inevitably cause confusion and deception amongst various litigants and would give unfair advantage to persons who adopt and use such a name..Pratibha Singh has sought Rs. 21 lakh ($39,000) in damages and has also sought a permanent injunction restraining Manoj Singh from using the mark/name “Singh & Associates” or any other deceptively similar name. Furthermore, Pratibha Singh has sought a permanent injunction restraining Manoj Singh from contacting Plaintiff’s clients and creating an impression that “the Defendant’s firm or services are connected with the Plaintiff.”.When the matter was initially listed before the Delhi High Court, there were attempts to reach an amicable settlement. In fact, on May 1, 2012 Senior Advocate Vinay Bhasin was appointed as a mediator. When this also failed, the Court was left with no option but to issue notice in the interim applications and direct summons to be sent to Singh & Associates..In its defense, Manoj Singh’s Singh & Associates has denied all the allegations made by the Plaintiff. The Defendant firm has stated that it has been in service since 2002 and has continuously and extensively used the service mark/trade name Singh & Associates since that year. The Defendant firm further states that the firm has been visibly present in the national and the international legal community ever since 2002 and along with the Plaintiff attended several international conferences since 2006, if not earlier. Manoj Singh’s Singh & Associates also alleges that the premise of the Plaintiff becoming aware of the Defendant firm only in 2010 is factually incorrect and amounts to misrepresentation of the facts of this case..Manoj Singh’s Singh & Associates further alleges that the Plaintiff is neither using the Mark/name ‘Singh & Singh’ nor conducting any business under the name ‘Singh & Singh’. The Defendant firm submits that on perusal of the official records with the Trade Marks office reveals that the Plaintiff’s trademark application, which was made in 2005, was based on “proposed to be used” basis and later the Plaintiff again applied for the registration in 2009 and was based on “user claimed since 1997”. The Defendant firm argues that surprisingly the trademark was later amended to add a retrospective date of use and this aspect of Plaintiff’s alleged date of commencing use is not proven..Manoj Singh alleges that the Plaintiff has not produced any documents to show that it has commenced use of the mark “Singh & Singh” in 1997 except one letter of 1998 that names Singh & Singh and Maninder Singh, who is not part to the suit..The Defendant firm further alleges that the perusal of the certificate of registration would reveal that the Plaintiff is trading as Prathiba M. Singh and not as ‘Singh & Singh’, which further substantiates that the Plaintiff has never used the trademark “Singh”..Manoj Singh’s Singh & Associates also denies the accusation of Pratibha Singh that it adopted the trade name / service mark in a mala fide manner and attempted to benefit from Pratibha Singh’s alleged reputation. The Defendant firm submits that it adopted the trade name and service mark prior to the Plaintiff and its adoption was bona fide adoption of the proprietor’s (Manoj K. Singh’s) family name..Below are the Trademarks of both the firms:.The Defendant firm further argues that the foundation of the instant suit is based on an article co-authored by two associates of Manoj Singh’s firm in respect of a judgment passed by the Hon’ble High Court of Delhi in which Pratibha Singh was one of the Advocates who argued the matter. Manoj Singh states that the associate of his firm was legally entitled to express opinion with respect to the said judgment and the High Court being a Court of record, the judgments passed by the High Courts have evidentiary value and force of law in the State. The Defendant argues that merely because Pratibha Singh appeared as one of the lawyers in the said judgment does not give her proprietary right in the said judgment. Manoj Singh also states that the manner in which the Plaintiff communicated on the issue is unfair and immature and submits that the said article written by the associates of his firm do not give any cause of action to file the present suit..Interestingly, Manoj Singh states that the surname “SINGH” is extremely common within India and thus no one party can claim exclusive rights thereto, irrespective of the amount of use. Manoj Singh’s Singh & Associates also argues that there are several law firms in lndia and abroad who uses their family names and it is customary to use family names in lndia as also abroad due to the nature of profession which is unique..Lastly, the Defendant firm states that the use of name “Singh & Associates” under no stretch of imagination has caused or likely to cause confusion to the Plaintiff’s clients (existing or future)..Pratibha Singh has been represented by Chander M. Lall and who is briefing Senior Advocate Rajiv Nayyar while Manoj Singh has been represented by Senior Advocate Rajiv Dutta. The matter is next listed for August 31, 2012.