Singh And Singh Law Firm Llp & Anr vs Singh And Singh Attorneys & Ors on 29 May, 2024

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Delhi High Court - Orders

Singh And Singh Law Firm Llp & Anr vs Singh And Singh Attorneys & Ors on 29 May, 2024

Bench: Sanjeev Narula

                                    $~18
                                    *           IN THE HIGH COURT OF DELHI AT NEW DELHI
                                    +           CS(COMM) 466/2024
                                                SINGH AND SINGH LAW FIRM LLP & ANR.                                                  ..... Plaintiffs
                                                                                      Through:                 Mr. Tanmaya Mehta and Mr.
                                                                                                               Krishnagopal Abhay, Advocates with
                                                                                                               P-2 in person.

                                                                                      versus

                                                SINGH AND SINGH ATTORNEYS & ORS.                                                   ..... Defendants
                                                                                      Through:                 Mr. Aditya Gupta and Mr. Sauhard
                                                                                                               Alung, Advocates for D-6.

                                                CORAM:
                                                HON'BLE MR. JUSTICE SANJEEV NARULA
                                                             ORDER

% 29.05.2024 I.A. 30773/2024(seeking leave to file additional documents)

1. This is an application seeking leave to file additional documents under the Commercial Courts Act, 2015.

2. Plaintiffs, if they wish to file additional documents at a later stage, shall do so strictly as per the provisions of the said Act.

3. Disposed of.

I.A. 30774/2024 & I.A. 30775/2024 (seeking exemption)

4. Exemption is granted, subject to all just exceptions.

5. Plaintiffs shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.

6. Disposed of.

CS(COMM) 466/2024 Page 1 of 10

This is a digitally signed order.

7. Exemption is granted, subject to all just exceptions.

8. Disposed of.

I.A. 30777/2024(seeking exemption from pre-institution mediation)

9. As the present suit contemplates urgent interim relief, in light of the judgment of the Supreme Court in Yamini Manohar v. T.K.D. Krithi,1 exemption from attempting pre-institution mediation is granted.

10. Disposed of.

I.A. 30778/2024(seeking direction to Registry to accept audio visual data in a pen drive)

11. Plaintiffs seek leave of the Court to place on record certain audio- visual data, forming the subject matter of the present suit. Rule 24 of Chapter XI of the Delhi High Court (Original Side) Rules, 2018 stipulates that electronic records can be received in CD/DVD/Medium encrypted with a hash value. The said Rule is extracted below:

"24. Reception of electronic evidence -A party seeking to tender any electronic record shall do so in a CD/ DVD/ Medium, encrypted with a hash value, the details of which shall be disclosed in a separate memorandum, signed by the party in the form of an affidavit. This will be tendered along with the encrypted CD/ DVD/ Medium in the Registry. The electronic record in the encrypted CD/ DVD/ Medium will be uploaded on the server of the Court by the Computer Section and kept in an electronic folder which shall be labeled with the cause title, case number and the date of document uploaded on the server. Thereafter, the encrypted CD/ DVD/ Medium will be returned to the party on the condition that it shall be produced at the time of admission/denial of the documents and as and when directed by the Court/ Registrar. The memorandum disclosing the hash value shall be separately kept by the 1 2023 SCC OnLine SC 1382.

CS(COMM) 466/2024 Page 2 of 10

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/06/2024 at 21:33:10 Registry on the file. The compliance with this rule will not be construed as dispensing with the compliance with any other law for the time being in force including Section 65B of the Indian Evidence Act, 1872."

12. Registry may receive electronic record on CD-ROM/ DVD so long as it is encrypted with a hash value or in any other non-editable format. The audio-visual data be placed in the electronic record of the present suit in a format which is non-editable, so that the same can be viewed by the Court during hearing.

13. Application is disposed of.

I.A. 30779/2024(seeking permission to file electronically signed & notarised affidavit & vakalatnama)

14. Mr. Tanmaya Mehta, counsel for Plaintiffs, seeks permission to file electronically signed and notarised affidavits and vakalatnama. He submits that because of pressing commitments of the Plaintiffs' constituted attorney, she could not visit the office of the Notary Public. Therefore, the constituted attorney utilized the online notary platform "NotarEase," through which, she appeared virtually before a qualified Notary Officer in Delhi and digitally signed the affidavits and vakalatnama in support of the suit and accompanying applications, before the Officer. The entire process for e- notarization has been elaborated in paragraph No. 2(a) to (h) of the application. The screenshots of the video call, completion certificate issued by eMudhra, and document log details, explaining the procedure adopted have been reproduced in the applications.

15. Considering the afore-noted, the Court is satisfied that Plaintiffs' constituted attorney has electronically signed the notarised affidavits filed CS(COMM) 466/2024 Page 3 of 10 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/06/2024 at 21:33:10 along with the petition and accompanying applications as well as the vakalatnama. Accordingly, the applications are allowed and the electronically signed and notarised affidavits are taken on record.

16. Disposed of.

CS(COMM) 466/2024

17. Let the plaint be registered as a suit.

18. Issue summons. Mr. Aditya Gupta, Advocate, accepts notice on behalf of Defendant No. 6. He confirms the receipt of paper-book, and waives the right of formal service of summons. Written statement by the said Defendant shall be filed within thirty days commencing from today. Upon filing of process fee, issue summons to the remaining Defendants by all permissible modes. Summons shall state that the written statement(s) shall be filed by the Defendants within 30 days from the date of receipt of summons. Along with the written statement(s), the Defendants shall also file affidavit(s) of admission/denial of the documents of the Plaintiff, without which the written statement(s) shall not be taken on record.

19. Liberty is given to the Plaintiffs to file replication(s) within 15 days of the receipt of the written statement(s). Along with the replication(s), if any, filed by the Plaintiffs, affidavit(s) of admission/denial of documents of the Defendants, be filed by the Plaintiffs, without which the replication(s) shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.

20. List before the Joint Registrar for marking of exhibits on 27th August, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.

CS(COMM) 466/2024 Page 4 of 10

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/06/2024 at 21:33:10

21. List before Court for framing of issues thereafter.

I.A. 30772/2024(u/O XXXIX Rules 1 and 2 of CPC)

22. The Plaintiffs have filed the instant application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, 2 seeking protection of their mark/ name "Singh & Singh" used in relation to the legal services provided by them. They are aggrieved by the use of identical marks -

"Singh and Singh" and "Singh and Singh Lawyers LLP" and their derivatives by Defendants No. 1 and 2, for the same services.

23. The case of Plaintiffs, as set out in the plaint, is as follows:

23.1. Plaintiff No. 1, Singh & Singh Law Firm LLP, was founded in 1997 for providing legal services under the trademark "Singh & Singh". Later, in 2005, the firm adopted another trademark "Singh & Singh Advocates." The details of registrations of the above trademarks are as follows:

23.2. Plaintiff No. 1 assigned the afore-mentioned trademarks to Plaintiff No. 2, MKS IP Assets Pvt. Ltd., w.e.f. April 2014. This change has been reflected in the records of the Trademarks Registry. 23.3. Plaintiff No. 1-firm has, over the years, expanded into several branches of law, including constitutional, commercial, arbitration, and 2 "CPC."

CS(COMM) 466/2024 Page 5 of 10

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/06/2024 at 21:33:10 intellectual property laws. The firm has acquired enormous acclaim in India as well as in several foreign countries. Their clientele hails from different parts of the world, such as the USA, Canada, Japan, South Africa, Australia. Over the years, Plaintiff No. 1 has become one of India's leading law firms in the fields of intellectual property litigation, information technology, and technology, media and telecommunication. The plaint also sets out the details of various accolades and awards received by Plaintiff No. 1. In addition, the lawyers engaged with Plaintiff No. 1 are members of international organizations like INTA, APAA, AIPPI, FICPI etc., and are active participants of annual conferences and other events organized by these institutions. These conferences are conducted at a global level in various parts of the world, including the USA, Canada, Germany, and Australia.

23.4. The business presence of Plaintiff No. 1 spans across the world, including South Africa, where they cater to major multi-national corporations, such as Cipla, Bharti, Gilead, PepsiCo, GlenMark, ZEE, FritoLay, GoodEarth, ICICI Bank and Radio Mirchi. Members of Plaintiff No. 1 also regularly collaborate with law firms and lawyers based in South Africa for providing services to their clients located in the said country. Many of Plaintiff No. 1's partners and lawyers are members of organizations that facilitate interactions and collaboration between the legal industries of different nations. Several of these organizations have committees, where advocates from both Plaintiff No. 1-firm and South Africa, are members. Thus, the firm has a strong cross-border reputation, which extends to South Africa.

23.5. Defendant No. 1, a law firm located in South Africa, offers their CS(COMM) 466/2024 Page 6 of 10 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/06/2024 at 21:33:11 services under the trademark/ name "Singh and Singh Attorneys." They also have an active website "https://singhlaw.co.za/," which is accessible in India. This domain name/ website was registered in Defendant No. 1's name on 15th October, 2021. Defendant No. 2 is the owner/ founder of Defendant No. 1.

23.6. Through various online modes, the Defendants are promoting their trademark "Singh and Singh Attorneys" in India and soliciting clients for their business. The clients, who are of Indian origin, are likely to be misled into assuming a relationship between Plaintiff No. 1 and Defendant No. 1. Further, given Plaintiff No. 1's strong cross-border presence and reputation, the viewers of such promotional posts/ material would potentially be misled about their origin. The marks being identical and used for the same purpose, the Defendants' use of the impugned mark amounts to infringement and passing off of Plaintiff's trademarks.

24. The Court has considered the submissions advanced by Mr. Mehta, and reviewed the record. A comparison of the Plaintiffs' and Defendants' marks /names is set out in the following table, reproduced from the plaint:

Comparison table- names, domains, social media accounts and primary logos S.No. Description Plaintiffs Defendants 1 Mark/name Singh & Singh Singh and Singh 2 Full name Singh & Singh Law Firm Singh and Singh Attorneys LLP 3 Abbreviated Singh & Singh Law Firm Singh and Singh name 4 Domain name/ http://www.singhands https://singhlaw.co.za/ website ingh.com/ 5 Facebook @SinghLawFirmLLP @Singh & Singh Attorneys and Conveyances CS(COMM) 466/2024 Page 7 of 10 This is a digitally signed order.

25. In the prima facie view of the Court, the above table conspicuously demonstrates that the parties' marks are identical and are being used for identical services, targeting the same segment of consumers. The profile of Plaintiff No. 1, as noted above, and as delineated in the plaint, clearly indicates that Plaintiff No. 1's law practice is not confined to India, and extends to South Africa. On a preliminary assessment, it appears that Plaintiff No. 1 has a significant digital presence and global reputation and goodwill and is servicing clients across the globe. The Court also finds prima facie merit in the contention of the Plaintiffs that nowadays legal services are rendered across the globe through internet and electronic means. 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. 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 CS(COMM) 466/2024 Page 8 of 10 This is a digitally signed order.

26. In view of the above, the Court finds that the Plaintiffs have made out a prima facie case in their favour and in case an ex-parte ad-interim injunction is not granted, the Plaintiffs will suffer an irreparable loss; balance of convenience also lies in favour of the Plaintiffs and against the Defendants No. 1 and 2.

27. 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,"

" ," and " " 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.

28. Ministry of Electronics and Information Technology, Government of India and Department of Telecommunications, Ministry of Communications, Government of India is directed to issue necessary directions to the telecom service providers and internet service providers to block access within India to the website hosted on the impugned domain name "https://singhlaw.co.za/".

29. Upon filing of process fee, issue notice to the Defendants, by all CS(COMM) 466/2024 Page 9 of 10 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/06/2024 at 21:33:11 permissible modes, returnable on the next date of hearing. Reply, if any, be filed within four weeks from the date of service. Rejoinder thereto, if any, be filed within two weeks thereafter.

30. Compliance of Order XXXIX Rule 3 of the Code of Civil Procedure, 1908 be done with ten days from today.

31. List on 23rd October, 2024.

SANJEEV NARULA, J MAY 29, 2024 d.negi CS(COMM) 466/2024 Page 10 of 10 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 03/06/2024 at 21:33:11

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Delhi High Court - Orders