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Recently, the Delhi High Court through its judgment vide order dated 2nd June ’21, temporarily restricted the Canada based law firm named Singh + Singh Lawyers LLP (S&S Canada) from violating the trademark rights of the India based law firm Singh & Singh Law Firm LLP (S&S India). Through this article, the author aims to critically analyze the judgment order granted by the Delhi High Court in relation to the above-mentioned matter.
S&S India, operating under the name Singh & Singh, which is a registered trademark since 2005, is a law firm practicing in India since 1997. According to S&S India, two Canada-based law firms named ‘GSC Law’ and ‘KSK Law’ recently started operating together under the name Singh + Singh. S&S India filed a suit against S&S Canada for trademark infringement while claiming that its business extends beyond India and has an impact in Canada as well.
The Court noted that the two entities had predominantly identical names, the legal services provided, and the same customer class. S&S Canada currently only practices in Canada, but S&S India’s reputation and goodwill are worldwide and its reputation cannot be confined to geographical borders, within an internet-driven environment. It was noted. The considerable online presence of S&S Canada, the similarity between the color combination of the logos and the identical names indicated a strong risk of confusion. The court, therefore, was persuaded that a case for S&S India existed, and henceforth, it granted the interim injunction.
Interim Injunctions Requirements:
Although an interim injunction was granted in the matter, however, what has to be taken into account is that not all the essentials required for granting an interim injunction were fulfilled in the current matter. According to the Delhi High Court, an interim injunction is granted on the basis of the below-mentioned points:
- Establishment of a prima facie case
- Balance of Convenience
- Possibility of irreparable damage
This weakens the sanctity of the interim injunction as not all essentials were fulfilled and henceforth, the court should have considered this before granting the exceptional remedy of interim injunction.
While granting the interim injunction, the court did not deal with the question of jurisdiction at all. However, what has to be taken into account is that S&S Canada is registered in Canada and does not have any business in the territorial jurisdiction of India. S&S India might claim that the Canada-based firm has strong online business and presence and this could be accessed by anyone sitting in Delhi as well, in light of which, by the virtue of WWE Judgement, the Delhi High Court shall have jurisdiction. Nonetheless, it would be a point of concern as the Delhi High Court did not consider its jurisdictional validity before granting the interim injunction and now S&S Canada might claim lack of jurisdiction of the Delhi High Court in further proceedings.
Foreign Standing and Clients Abroad
Supreme Court had earlier recognized that a firm with global goodwill and a well-known trademark can protect its jurisdiction even in those markets where it does have any operations at a particular moment. However, in the current matter, S&S India has not claimed the existence of a well-known trademark, due to which, it might be a concern as to how any kind of damage will be done to S&S India through S&S Canada’s practice in Canada.
Confusion among foreign customers is certainly a real problem and may be more likely than Indian customers. S&S India sought protection here in India against a company that operates strictly in a foreign country. There seems to be a problem in the current situation i.e. inappropriate solution. The injunction aims to prevent ‘foreign customers and law firms’ from confusing, presumably in Canada, who can confound S&S Canada as S&S India. In India, however, where there are no actual operations of S&S Canada. Since trademark laws are ‘territorial in nature and are not global, it is unlikely that the injunction will have a real effect to prevent confusion among potential foreign customers.
The case in hand did not delve into confusion very deeply – probably because the names used are almost identical in this case. While the infringement issues are firmly opposed to Defendant, it is important to ask why S&S Canada was issued an interim order, an exceptional remedy, without waiting for S&S Canada to submit a written declaration, taking into account the change to the name took place only one month ago. This is especially relevant given that the issue of jurisdiction has not been investigated and an order has been adopted without adequate reasoning as to how all three injunction factors have been met.
Furthermore, it is difficult to see how any real harm can be prevented unless parallel infringement proceedings are brought in the competence of the defendant – whereby it would appear sensitive to invoke the well-known trademark and transboundary reputation doctrine in that jurisdiction.
Author: Rounak Doshi – a student of National Law Institute University (Bhopal), currently an intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at email@example.com.