Delhi High Court restrains South African law firm from using trademark similar to India's Singh & Singh

The Delhi High Court recently restrained a law firm based in South Africa from using the trademark “Singh and Singh” or any other similar mark deceptively identical to India’s Singh and Singh Law Firm LLP [Singh and Singh Law Firm LLP & Anr v Singh and Singh Attorneys & Ors]..In an order passed on May 29, Justice Sanjeev Narula said that a comparison of the names, domains, social media accounts and primary logos of the two firms conspicuously demonstrated that the law firms’ marks were identical and being used for identical services, targeting the same segment of consumers.“Till the next date of hearing, Defendants No. 1 and 2 or anybody acting on their behalf are restrained from using in India the impugned marks “Singh and Singh,” “Singh & Singh,” “singhlaw,” “singhandsingh,” or any other trademark/ trade name/ service name/ trading style, which is either identical to, or deceptively similar to Plaintiffs’ marks/ names/ logos “Singh & Singh,” “Singh & Singh Law Firm LLP”, “Singh and Singh,” “http://www.singhandsingh.com/,” “singhlaw,” “singhandsingh.com,” “Singh & Singh Advocates,” “Singh & Singh Attorneys” or any other derivatives thereof so as to result in infringement and passing off of Plaintiffs’ trademarks,” the Court ordered.Justice Narula also ordered the Ministry of Electronics and Information Technology (MEITY) and the Department of Telecommunications (DoT) to block access to the defendants’ website in India..In a detailed order, the Court said that in this internet-driven world, law firms such as the Singh and Singh Law Firm LLP would have a reputation that is not limited by geographical boundaries.“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 Defendants’ “Singh and Singh” is another branch or an associate office of Plaintiff’s “Singh & Singh.” Thus, the use of impugned marks, that are identical or deceptively similar to the trademarks of the Plaintiffs, and their domain name “singhlaw.co.za” is likely to cause confusion to the clients located in India as well as South Africa, where Plaintiff No. 1 has a formidable presence,” the Court stated. .The Court passed the order after Singh and Singh Law Firm LLP filed a suit for trademark infringement against South Africa based Singh and Singh Attorneys.It was argued that the plaintiff’s presence spans worldwide, including South Africa, catering to major multinational corporations.The Court was told that the defendants were promoting their trademark “Singh and Singh Attorneys” in India and soliciting clients for their business and there is a likelihood that the clients would be misled into assuming a relationship between the plaintiff and the defendant. .After considering the case, the Court agreed with Singh and Singh Law Firm LLP’s arguments and passed the injunction order..Advocates Tanmaya Mehta and Krishnagopal Abhay appeared for the plaintiffs..[Read Order]