Indian court bars GTA law firm from using name and website in trademark dispute
Interim injunction granted against Mississauga’s Singh + Singh LLP on request of India’s Singh & Singh Law Firm LLP
Mississauga law firm Singh + Singh LLP has been temporarily barred from using its logo and domain name after an Indian judge granted an interim injunction requested by the similarly named Singh & Singh Law Firm LLP, based in New Delhi.
The Indian law firm – which operates four offices across the country, but none in Canada – launched a trademark action against its Ontario-based counterpart in May, soon after learning of its existence via social media posts.
The defendants, who include Mississauga-based Singh + Singh principals Kunwar Singh Kohli and Gurpreet Singh Chandok, are accused of infringing on the Indian firm’s marks, which were registered in that country more than a decade ago.
Although proceedings remain at an early stage and no claims have yet been proven, Justice Sanjeev Narula of the High Court of Delhi was satisfied that the Indian firm had established a prima facie case for infringement, and ordered a temporary injunction until the next hearing in the matter on Sept. 23.
“In the present scenario of law practice, where cross border reputation exists, the confusion amongst clients can have undesirable ramifications for the Plaintiffs, in case the Defendants are not injuncted by this Court,” the judge wrote. “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.”
Among other things, the injunction temporarily restrains the Canadian defendants from using the name Singh + Singh, their website singhllp.com, or their Twitter handle @singhsinghllp in relation to legal services “at any place or in any form including in print or electronic media.”
Tejveer Bhatia, the New Delhi-based managing partner of Singh & Singh welcomed the judgment in a statement to Court Report Canada:
“Justice Narula’s ruling is absolutely fair and will help us in preventing significant harm which would be caused to us, had the Defendants been allowed to continue using a mark identical to ours,” Bhatia said.
Singh Kohli did not respond to a request for comment, while Singh Chandok declined the opportunity while the matter is pending before the court.
According to Justice Narula’s ruling, the New Delhi law firm has been known as Singh & Singh since 1997, and registered its first trademark bearing the name in 2005. It claims to rank as one of India's leading law firms in the intellectual property litigation and information technology fields, with a client-base extending well beyond the country’s borders, as far as Canada, the U.S., Japan and Australia.
According to their LinkedIn profiles, Singh Kohli has only practised law in Ontario since his call to the bar, while Singh Chandok practised in New Delhi from 2008 to 2017, before his move to Canada. Although he remains registered with the Bar Council of Delhi, Singh Chandok’s lawyer told Justice Narula that he no longer practises in India.
In submissions to the court, the Indian firm accused the Canadian firm of trying to capitalize on its global reputation, alleging that Singh Chandok’s wife once worked for them as associate around a decade ago.
The plaintiffs also pointed to the previous branding of Singh Chandok’s and Singh Kohli’s sole practices in Mississauga before they joined forces: GSC Law and KSK Law respectively.
“The conspicuous absence of the word ‘Singh’ in the trading styles or names of any of the Defendants shows that [Singh Chandok and Singh Kohli] have changed to the impugned name in May 2021 deliberately and with full knowledge of the Plaintiffs’ rights in the mark ‘Singh & Singh’ to encash upon the same,” reads Justice Narula’s summary of the Indian firm’s arguments.
Meanwhile, counsel for the Canadian defendants told the Indian court that his clients are young lawyers establishing their practice in Ontario, and that their use of the “Singh + Singh” mark was done in good faith.
He urged the judge not to impose the interim injunction, claiming that it would interfere with their practice. In any case, he added that one was not justified because the Singh + Singh mark was derived from its founders’ names, and because there was no overlap at all between the practices of the two law firms.
“The Defendant No. 1’s practice is confined to Ontario and as per law, they cannot practice beyond the jurisdiction of Ontario, Canada, and in any case, certainly not in India. In these circumstances, Mr. Singh submits that since the Defendants are not servicing any clients in India, the Plaintiffs are not prejudiced by the use of the mark ‘Singh + Singh’ by the Defendants and therefore there is no ground or reason to grant an injunction,” Narula’s decision reads.
However, the judge sided with the Indian firm, concluding that there was a strong likelihood people would mistake the Mississauga firm for one of its branch or associate offices.
“Merely because the Defendants contend that they are currently practicing only in Canada, cannot be a ground to refuse the grant of injunction,” Justice Narula wrote. “In this internet-driven world, law firms such as the Plaintiff No. 1 would have a reputation which 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.”
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