Intellectual Property Law Judgment Analysis: Sujata Chaudhri v. Swarupa Ghosh

Introduction

The present case relates to an almost identical logo of 2 (two) Law firms. Here, the plaintiff, Ms. Sujata Chaudhri, proprietor and managing partner of Sujata Chaudhri IP attorneys, sought a permanent injunction restraining trademark infringement, copyright infringement, and passing off against the Defendant, Ms. Swarupa Ghosh, an IP lawyer. The order was passed in favor of the plaintiff.

Law judgement

[image Sources : Shutterstock]

Facts

The facts of the present case are that the plaintiff, Ms. Sujata Chaudhri is an IPR lawyer, who was enrolled with the Bar Council of India in 1996, after which she moved to New York and came back to India in 2011 and in 2014, she established a firm named Sujata Chaudhri IP attorney.

An SC device mark, which is used either alone or in conjunction with the words SUJATA CHAUDHRI IP ATTORNEY, was adopted by the plaintiff. The said LOGO was registered by the plaintiff bearing no. 2823275 in class 45 with respect to legal services provided by the plaintiff, including consultancy, advisory, licensing, and litigation services relating to the law, including intellectual property rights.

In mid-2022, the plaintiff got to know that the defendant had adopted an almost identical logo for her new chambers – SWARUPA GHOSH LAW CHAMBER offering legal advisory services, particularly in the area of intellectual property law. The said logo contained an SG device mark with the words SWARUPA GHOSH LAW CHAMBER.

Since the logos were almost identical, the plaintiff issued notice to the defendant on 20th June 2022, calling upon her the change her logo. Alternative logos were also suggested by the plaintiff.

Issue

The issue before the court was whether a permanent injunction, restraining the defendant from using the logo in question, trademark infringement, and copyright infringement should be given against the defendant.

Arguments

From the side of the defendant

The defendant submitted that the defendant is a bona fide adopted of the SG logo, which is based on the Edwardian Script ITC font. The said font is available to the public at large and can be used by anyone, and thus, there can be no ownership of the same. The defendant also submitted that in October 2020, the defendant and the plaintiff had a conversation on LinkedIn and the claim of the plaintiff that she came to know about the defendant’s logo in mid-2022 is incorrect.

From the side of the plaintiff

The arguments put forward by the plaintiff were that the SC devices mark was designed by the plaintiff and thus the copyright in the same is liable to be protected and that the logo, which was created by the plaintiff, has been adopted since 2014, whereas the defendant started her practice in 2017. Notice was also given to the defendant to change the logo.

Arguing about the LinkedIn conversation, the plaintiff submitted that the defendant contacted her and wanted to share her firm’s schedule of charges, to which the plaintiff, out of courtesy, merely asked her to share the same. And that the logo was not noticed by the plaintiff at that stage as the defendant’s message did not contain the logo.

Analyses/Order

After listening to both sides, the court starts by saying that both parties offer almost similar services to their clients, and it is the logo for which the plaintiff is seeking an injunction. If both logos are compared, then taking out a difference between the two is impossible and difficult to decipher. The issue here is the artistic way in which the logo is made.

About the LinkedIn messages, the defendant was aware of the plaintiff’s law firm and was promoting her service to the plaintiff. The messages do not contain any logo, and the said logo is not visible until one actually opens the message, upon which the logo may be visible. Therefore, the defendant’s argument of expecting the plaintiff to know the logo cannot be entertained.

The plaintiff logo is a registered logo and forms an inalienable part of the said registration. Under such circumstances use of an almost identical logo would be violative of the plaintiff’s statutory and common law rights. The mere fact that the font is open to the public for use does not mean the very same font has to be used by the defendant amongst the thousands of font options available. The court was of the opinion that the plaintiff has made out a prima facie case for the grant of interim injunction ad that the balance of convenience lies in its favor, failing which irreparable injury would be caused to the plaintiff. Thus, the defendant ought not to be permitted to use its logo, which is almost identical to the plaintiff’s logo. Therefore, the defendant shall stand restrained from using the impugned SG logo with effect from 1st January 2023. If the defendant wishes to adopt an alternative logo to resolve the issue, the court permitted her to move an application regarding the same before the court.

In my opinion, the court was right in deciding the current case since the clients both firms offer services to would eventually have to suffer if using the identical logos would have continued, as we cannot expect every person to differentiate between the two logos. The clients or the general public cannot be compensated, and the court should look into the interest of the general public in deciding such cases. As the logo was adopted by the plaintiff in 2014 and same was registered way before the defendant started her practice. Therefore, such copyright and trademark should belong to the plaintiff. The defendant was also given the suggestions of alternative logos in the notice served by the plaintiff to change her logo.

Conclusion

A higher standard of probability would be expected from lawyers and legal professionals, especially IPR lawyers, inasmuch as there is a duty cast on them to ensure that they do not imitate or adopt a name or a logo that is already in existence or in use by another person or entity, offering similar services. Considering the arguments put forward by the parties, the court decided to restrain the defendant from using the impugned logo.

Author: Rithik Gullaiya, A Student of Symbiosis Law School, Noida, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

References

[1] MANU/DEOR/160455/2022

Sujata Chaudhri vs. Swarupa Ghosh (19.10.2022 – DEOR) : MANU/DEOR/160455/

Leave a Reply

Categories

Archives

  • October 2024
  • September 2024
  • August 2024
  • July 2024
  • June 2024
  • May 2024
  • April 2024
  • March 2024
  • February 2024
  • January 2024
  • December 2023
  • November 2023
  • October 2023
  • September 2023
  • August 2023
  • July 2023
  • June 2023
  • May 2023
  • April 2023
  • March 2023
  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010