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

23rd February, 2023 - 6:01 am Categories: Intellectual Property 0 Comments

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.

[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 20^th 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/