Prathiba M. Singh vs Singh And Associates on 14 October, 2014

[Cites 8, Cited by 3]

Delhi High Court

Prathiba M. Singh vs Singh And Associates on 14 October, 2014

Bench: Rajiv Sahai Endlaw

*IN THE HIGH COURT OF DELHI AT NEW DELHI

% Date of decision: 14th October, 2014

+ CS(OS) No.1173/2012, I.A. No.7776/2012 (u/S 149 CPC), I.A.
No.12189/2012 (u/O 8 R-10 CPC), I.A. No.14017/2012 (of defendant
u/O 7 R-11 CPC), I.A. No.14518/2012 (of the defendant u/O 8 R-1
CPC), I.A. No.9079/2013 (of defendant for filing additional
documents), I.A. No.7775/2012 (of plaintiff for exemption) & I.A.
No.14519/2012 (of defendant for exemption)

PRATHIBA M. SINGH ..... Plaintiff
Through: Mr. Rajiv Virmani, Sr. Adv. with Mr.
C.M. Lall, Ms. Nancy Roy & Ms.
Shreyansh, Advs.
Versus
SINGH AND ASSOCIATES ..... Defendant
Through: Mr. Harish Malhotra, Sr. Adv. with
Mr. Vijay K. Singh, Mr. Nilava
Bandyopadhyay & Mr. Pratik Batta,
Advs.
CORAM :-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW

I.A. No.7774/2012 & I.A. No.7021/2013 (both u/O 39 R-1 & 2 CPC) in
CS(OS) No.1173/2012.

1. In this lis between two Advocates of this Court, for injunction

restraining infringement of mark / name used for legal services, the

applications of the plaintiff for interim relief are for adjudication.

2. The plaintiff approached this Court with a case:-

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(i) that the plaintiff coined the mark ―Singh & Singh‖ in the year

1997 when she started independent practice of providing legal

services and has been continuously using the said mark since

then and the said mark has acquired a secondary meaning

referring to the plaintiff, especially in the field of Intellectual

Property law;

(ii) that the name ―Singh & Singh‖ is a registered trade / service

mark in Class 42 in relation to legal services; applications for

registration were filed on 22nd December, 2005 and 9th

September, 2009, claiming user since the year 1997;

(iii) that since then, the mark / name ―Singh & Singh‖ has acquired

immense reputation and goodwill;

(iv) that the plaintiff learnt of use of the mark / name ―Singh &

Associates‖, also for a law office (i.e. the defendant herein), for

the first time in October, 2010 when an article in the name of

―Singh & Associates‖ was published in an international

magazine pertaining to two patent cases which were being

handled by the plaintiff;

(v) the plaintiff sent a communication dated 5 th October, 2010

cautioning the defendant not to use the name ―Singh &

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Associates‖; the defendant in response dated 11th October, 2010

acknowledged the possibility of confusion owing to similarity

of names and Mr. Manoj K. Singh purporting to be the

Managing Partner of the defendant telephonically assured the

plaintiff that the defendant will not indulge in any misleading

activity or misrepresentation; the plaintiff not wanting to raise a

dispute with professionals in the same fraternity and believing

the assurance, did not take any action;

(vi) however shortly prior to the institution of the suit on 26th April,

2012, the plaintiff learnt that the Advocates working in the

name and style of the defendant were making unsolicited

approaches to the foreign associates and clients of the plaintiff

in an obvious effort to confuse the plaintiff's clients and divert

work to the defendant;

(vii) instances of the clients of the plaintiff and others getting

confused owing to similarity in the names ―Singh & Singh‖ and

―Singh & Associates‖ are cited in the plaint;

(viii) an inquiry revealed that the defendant's logo ―Singh &

Associates‖ is registered with the Trade Mark Registry;

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(ix) the registration of the logo does not give the defendant any

exclusive rights in the words ―Singh‖ and / or ―Singh &

Associates‖; the defendant themselves at the time of registration

had represented that the application was for registration of

―Singh & Associates‖ logo;

(x) the plaintiff is the only law firm registered with the Trade Mark

Registry for a mark containing the word ―Singh‖;

(xi) that the plaintiff being the registered owner of the word mark

―Singh & Singh‖ is entitled to maintain a suit for infringement;

the defendant in their application for registration filed in the

year 2007 claimed user since the year 2002;

(xii) the defendant has filed another application for registration of a

logo mark containing the alphabets ‗S' and ‗C' in a triangle

along with the words SINGH & COSMOS; and,

(xiii) the defendant is using mark / name identical to that of the

plaintiff to ride piggyback on the plaintiff's goodwill and

reputation vesting in the mark ―Singh & Singh‖.

Accordingly, the relief of injunction restraining the defendant from

using the mark / name ―Singh & Associates‖ and ancillary reliefs are

claimed in the plaint.

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3. The suit came up before this Court first on 27th April, 2012 when the

defendant also appeared. Attempts by three successive Hon'ble Judges of

this Court to have the matter amicably resolved did not yield any result; in

the circumstance, summons of the suit and notice of the application for stay

were issued. The defendant has contested the suit by filing a written

statement, inter alia on the grounds:-

(a) that Mr. Manoj K. Singh is the sole proprietor of the defendant,

a general practice law firm rendering legal and corporate

services since June, 2002;

(b) that the name ―Singh & Associates‖ was adopted by the

proprietor Mr. Manoj K. Singh keeping in mind the

conventional practice of the legal fraternity to initiate their legal

practice after the proprietor's surname; instances of Bhasin &

Co., Luthra & Luthra, Dua Associates, Khaitan & Co. and Titus

& Co., all Advocates, are pleaded;

face thereof, the defendant has adopted a distinctive logo;

(d) the defendant has also registered the domain name

‗singhassociates.net' with the service provider Rediffmail Pro;

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(e) ―Singh & Associates‖ has acquired tremendous reputation,

goodwill and international popularity over the years;

(f) that in the International Trademark Association (INTA) Annual

Conference Attendee Directory since 2007, where the listing is

provided in alphabetical order, the plaintiff has been listed

immediately after the defendant and therefore it is not

believable that the plaintiff became aware of the defendant only

in the year 2010;

(g) the plaintiff has suppressed that her application of the year 2005

for registration was on the ‗proposed to be used' basis but it

was later on amended to read as ―user claimed since 1997‖;

(h) the claim of the plaintiff of user since 1997 is disputed;

(i) that while the plaintiff's mark is the simple lettered ―Singh &

Singh‖, without any distinct element, the defendant's mark

comprises of a highly distinctive logo;

(j) that the documents filed by the plaintiff show her legal practice

to be in her individual name and not in the trade name ―Singh &

Singh‖;

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(k) the defendant has never represented itself as being connected or

associated with the plaintiff in any manner whatsoever;

(l) though the instances pleaded by the plaintiff of confusion are

denied but with respect to one it is pleaded that instead of

illustrating that the defendant was confused as associated or

connected with the plaintiff, the plaintiff was believed to be

connected with the defendant;

(m) that while the plaintiff has a office in New Delhi only, the

defendant has offices at Mumbai, Bangalore, Hyderabad

besides Delhi;

(n) there are other law firms also using the word ―Singh‖;

(o) that the plaintiff has abandoned ―Singh & Singh‖ and has been

using ‗Singh & Singh Law Firm LLP';

(p) that there is no similarity between ―Singh & Singh‖ and ―Singh

& Associates‖;

(q) that the defendant has been using the word ‗Singh' bona fide

and Section 35 of the Trade Marks Act, 1999 prohibits grant of

any injunction;

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(r) litigants being well educated class, there cannot be any question

of confusion particularly when there is no similarity or

deceptiveness; and,

(s) Singh & Cosmos was a joint venture of Singh & Associates and

Cosmos for the purpose of establishment of an ‗LPO' but which

project was subsequently dropped; the defendant never intended

to provide legal services in India under the name Singh &

Cosmos.

4. The plaintiff filed a replication inter alia pleading:-

A. that the name ―Singh & Singh‖ is used in trade mark filings,

suit filings, legal notices, International publications, business

organizations; the fact that the name of the plaintiff as an

individual along with her enrollment number is used (as

required by the Bar Council's Rules) additionally along with

the name of the firm, does not amount to the plaintiff having

abandoned the name of the firm ―Singh & Singh‖;

B. that the defendant has been continuously changing its name to

come close to the name of the plaintiff's name / mark; the

defendant in the year 2006 was using the name ―Singh &

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Associates - a Corporate Law Firm‖; in the year 2008 the name

was changed to ―Singh & Associates Corporate Law Firm ―and

in the year 2009 to ―Singh & Associates Advocates and

Solicitors‖;

C. that the argument of the defendant of ―Singh‖ being his

surname and the defendant being thus entitled to use the same is

irrelevant as the plaintiff has acquired goodwill and reputation;

the defendant can use his full name Manoj K. Singh;

D. that the defendant hired a person by the name of Ms. Pramita

Sen as Business Development Manager to further create a total

confusion in the mind of plaintiff's clients;

E. the plaintiff is admittedly the prior adopter and user of the

subject name / mark;

F. denying that the plaintiff had in the year 2005 applied for

registration on a ‗proposed to be used' basis and pleading that

the same was an error on the part of the Trade Mark Registry;

and,

G. denying that ―Law Firm LLP‖ suffixed to ―Singh & Singh‖

amounts to abandonment of the mark / name ―Singh & Singh‖.

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5. The senior counsel for the plaintiff and the senior counsel for the

defendant were heard.

6. The senior counsel for the plaintiff argued that:-

I. the service marks are recognized since 1st September, 2003

when the Trade Marks Act, 1999 came into force;

II. while the plaintiff applied for registration on 22nd December,

2005 and which application was published on 16th October,

2007 and the registration was granted to the plaintiff on 9th

September, 2009, the defendant applied for registration only on

13th March, 2007 and logo of the defendant was registered on

31st January, 2011;

III. that while the registration of the plaintiff is for the word ―Singh

& Singh‖ per se, the registration of the defendant is for the

logo;

IV. that the rules of the Bar Council do not permit the use of firm

name on Vakalatnama;

V. that Mr. Manoj K. Singh was till the year 2005 practicing law

along with other Advocates in the name and style of ―Ladi,

Jain, Singh & Associates‖;

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VI. the hiring by the defendant of a Business Development

Manager having a name similar to that of the plaintiff shows the

intention of the defendant to take advantage of the confusing

names to ride on the goodwill of the plaintiff;

VII. that in today's day and age of computers, merely on punching

―Singh‖, the name of the defendant also appears and which

causes confusion; and,

VIII. the plaintiff, holding a registered mark and being admittedly the

prior adopter, is entitled to the relief. Reliance is placed on:-

a. Parker-Knoll Limited Vs. Knoll International Limited

[1962] RPC 265;

b. Joseph Rodgers & Sons Ltd. Vs. W.N. Rodgers & Co.

(1924) 41 RPC 277;

c. Bajaj Electricals Limited, Bombay Vs. Metals & Allied

Products, Bombay AIR 1988 Bom 167;

d. Kirloskar Diesel Recon. (P) Ltd. Vs. Kirloskar

Proprietory Ltd. 1997 PTC (17) 469;

e. Reddy Pharmaceuticals Ltd. Vs. Dr. Reddy's

Laboratories Ltd. 2007 (35) PTC 868 Del (DB);

I.As. No.7774/2012 & 7021/2013 in CS(OS) No.1173/2012 Page 11 of 32
f. Mahendra & Mahendra Paper Mills Ltd. Vs. Mahindra

& Mahindra Ltd. (2002) 2 SCC 147;

g. Aggarwal Sweet Palace Vs. Assistant Registrar of Trade

Marks, New Delhi 2004 (30) PTC 336 (IPAB);

h. Prof. Christopher Wadlow on ‗Bonafide Use of

Defendant's Own Name'; and,

i. Laxmikant V. Patel Vs. Chetanbhai Shah (2002) 3 SCC

7. Per contra the senior counsel for the defendant argued:-

(A) that while the Vakalatnamas filed by the plaintiff in the Court

do not mention ―Singh & Singh‖, the Vakalatnamas filed by the

defendant since the year 2005 are in the name of ―Singh &

Associates;

(B) that on comparison, there is no similarity in the two marks and

the logo with the words ―SA‖ used by the defendant makes the

mark of the defendant distinguishable from that of the plaintiff;

much prior to the institution of the suit and which shows the

bona fides of the defendant;

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(D) attention was invited to the Directory of Attendees of

International Conferences where the name of the defendant is

also published immediately before the name of the plaintiff; it

is argued that it is thus not open to the plaintiff to contend that

the plaintiff learnt of the defendant only in the year 2010; the

plaintiff is aware since the year 2007;

(E) reliance is placed on Sections 29 and 30(2)(e) of the Trade

Marks Act to contend that no case of infringement is made out

and the case if any can at best be of passing off;

(F) that the allegations of misrepresentation, poaching and passing

off are vague and without any particulars;

(G) that the plaintiff has not filed any application for cancellation of

the registration of the defendant as yet;

(H) that while the defendant has surname ‗Singh' by birth, the

plaintiff has acquired the said surname by marriage;

(I) that the website of the defendant with the said logo was

registered on 23rd January, 2004;

(J) that the plaintiff as well as the Advocates of the defendant have

since the year 2007 been attending International conferences on

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Intellectual Property Rights and from which also it is evident

that the plaintiff was fully aware of the defendant and has

falsely pleaded ignorance;

(K) that though the plaintiff claims to have become aware of the

defendant in the year 2010 but filed the suit only in the year

2012 because of the rising popularity including internationally

of the defendant;

(L) that the defendant enjoys the same if not better credentials than

the plaintiff and no case for the defendant wanting to encash the

goodwill of the plaintiff is made out;

(M) that the goodwill of the plaintiff is in her own name and no

reputation in the name of ―Singh & Singh‖ has been built over

the years;

(N) with reference to the cause list published by this Court and the

letterhead of the plaintiff, it is argued that the reference therein

also is to the plaintiff as an individual and not to ―Singh &

Singh‖;

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(O) there is no question of deception as internationally also it is

known over the years that ―Singh & Singh‖ and ―Singh &

Associates‖ are different;

(P) that the mistake even if any committed by any one person in

addressing a document meant for one to another cannot be the

cause of action;

(Q) no instance of the defendant having ever taken plaintiff's legal

brief has been cited;

(R) reliance is placed on:-

(a) judgment dated 22nd February, 2006 of the Indiana Supreme

Court in Keaton and Keaton Vs. R. Mark Keaton;

(b) Dabur India Ltd. Vs. Alka Ayurvedic Pvt. Ltd. 164 (2009)

DLT 131;

PTC 217 (Del);

(d) Gufic Ltd. Vs. Clinique Laboratories, LLC 2010 (43) PTC

788 (Del) (DB);

(e) Construction Research & Technology GMBH Vs. Dirk India

Private Limited 2011 (47) PTC 560 (Del);

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(f) Duke Fashions (India) Ltd. Vs. Girish Hosiery

MANU/DE/1679/2010;

(g) Kaviraj Pandit Durga Dutt Sharma vs. Navaratna

Pharmaceutical Laboratories AIR 1965 SC 980;

(h) judgment dated 31st May, 2011 of this Court in CS(OS)

No.207/2011 titled IHHR Hospitality Pvt. Ltd. Vs.

BESTECH India Pvt. Ltd.;

(i) Himalaya Drug Co. Vs. SBL Limited 2010 (43) PTC 739

(Del);

(j) judgment dated 29th May, 2009 in FAO (OS) No.118/2009

titled Goenka Institute of Education & Research Vs. Anjani

Kumar Goenka;

(k) Alkem Laboratories Ltd. Vs. Mega International (P) Ltd.

2009 (41) PTC 302 (Del);

(l) Trinethra Superretail Private Limited Vs. Mee Trinetra

Trading Private Limited MANU/AP/0290/2011;

(m) Mr. Arun Jaitley Vs. Network Solutions Private Limited 181

(2011) DLT 716;

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(n) judgment dated 16th September, 2011 of this Court in CS(OS)

No.1216/2011 titled Radico Khaitan Limited Vs. Carlsberg

India Private Limited;

(o) Carlsberg India Pvt. Ltd. Vs. Radico Khaitan Ltd. 186 (2012)

DLT 368;

(p) Asian Paints Limited Vs. Home Solutions Retail (India)

Limited 2007 (35) PTC 697 (Bom);

(q) Bharat N. Parikh Vs. Ashok Tripathy MANU/TN/3097/2006;

(r) Haldiram Bhujiawala Vs. Anand Kumar Deepak Kr. 2010

(43) PTC 771 (Del);

(s) Sunstar Overseas Ltd. Vs. Rameshwar Dass Garg 2011 (46)

PTC 89 (Del);

(t) M/s S. M. Dyechem Ltd. Vs. M/s. Cadbury (India) Ltd.

(2000) 5 SCC 573;

(u) Rhizome Distilleries P. Ltd. Vs. Pernod Ricard S.A. France

166 (2010) DLT 12;

(v) Ranbaxy Laboratories Limited Vs. Intas Pharmaceuticals

Ltd. 182 (2011) DLT 529;

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(w) Thulasi and Thulasi's Vs. Thulasi Jewelry Mart 2010 (44)

PTC 474 (Karn);

(x) judgment dated 19th February, 2010 of this Court in CS(OS)

No.246/2004 titled Rich Products Corporation Vs. Indo

Nippon Food Ltd.;

(y) Rajinder Kumar Aggarwal Vs. Union of India 147 (2008)

DLT 104; and,

(z) judgment dated 21st August, 2012 of this Court in CS(OS)

No.1399/2012 titled Consolidated Contractors International

Company S.A.L Vs. Consolidated Construction Consortium

Ltd.

(S) that the defendant has been spending monies on attending and

sponsoring International Conferences under the name ―Singh &

Associates‖ and the plaintiff by not taking any action inspite of

knowledge since the year 2007 has allowed the defendant to

build reputation; and,

(T) that in all the judgments cited by the plaintiff the trade mark

was being used for several years and had attained

distinctiveness and which is not the case in the present facts.

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8. The senior counsel for the plaintiff in rejoinder has contended:-

(i) that reputation in today's day and time travels fast. With

reference to Sections 17 and 28(1) to (3), it was argued that the

registration of the logo ―Singh & Associates‖ did not give

exclusive right to the defendant to the use of the word ―Singh‖

and therefore the action for infringement is maintainable;

reliance is placed on:-

A. Automatic Electric Limited Vs. R. K. Dhawan 1999

PTC (19) 81 (Delhi);

B. Info Edge (India) Pvt. Ltd. Vs. Shailesh Gupta 2002

(24) PTC 355 (Delhi);

C. Satyam Infoway Ltd Vs. Sifynet Solutions Pvt. Ltd. 2004

(28) PTC 566 SC; and,

D. British Sky Broadcasting Group Plc Vs. Microsoft

Corporation [2013] EWHC 1826 (Ch)

(ii) that the defendant himself has been claiming monopoly to the

words ―Singh & Associates‖ and cannot contend that ―Singh &

Singh‖ is incapable of protection;

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(iii) that a large number of reported judgments of the cases

conducted by the plaintiff bear testimony to the goodwill and

reputation of the plaintiff;

(iv) that the test is not of the surname by birth or marriage;

(v) that the mala fides of the defendant are evident from the

defendant not using his full name but a logo bearing the words

―Singh & Associates‖ which is deceptively similar to the

previously registered name / service mark of the plaintiff; and,

(vi) that the cause of action to the plaintiff is a continuing one.

9. The senior counsel for the defendant re-emphasized that all reported

judgments are in the individual name of the plaintiff and not in the name of

―Singh & Singh‖ and further clarified that even during the time of ―Ladi,

Jain, Singh & Associates‖, the defendant was operating ―Singh &

Associates‖.

10. Notwithstanding the previous efforts made to have the matter

amicably solved / settled having failed, this judgment was reserved for a

considerable time in an endeavour to find a mutually satisfactory solution for

both the parties through the legal process and in the hope that time being a

healer of wounds, with the passage of time the hardened attitudes, fueled
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more by ego than by a desire to find a solution, would be softened; alas, the

latter has not happened. The Supreme Court in Rajesh Kumar Vs.

Amrawati Bharti (1985) 3 SCC 609 observed that time heals a festering sore

and mollifies the sting and certain situations call for postponing the decision

making exercise. With the same sentiment, decision making was deferred in

State of Himachal Pradesh Vs. Union of India (2010) 15 SCC 107 also.

However, on the brighter side, the situation has not worsened / aggravated in

the last over one year since when the judgment is reserved; neither has in the

interregnum brought any fresh complaints against the other or filed

affidavits / documents of, either deriving any advantage of the reputation /

goodwill / name of other or owing to similarity of names, stealing a march

over the other. There is another significant development since. The

plaintiff, who had instituted this suit as sole proprietor of ―Singh & Singh‖

Advocates, was in December, 2013 designated as a Senior Counsel of this

Court; though as per website www.singhandsingh.com, ―Singh & Singh Law

Firm LLP‖ continues, with others as partners.

11. The Court, in my opinion, when faced with a litigation between two

Advocates who rather than assisting their clients in securing justice have

taken up cudgels against each other, owes a duty to, instead of deciding the

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same like any other lis, step out of the legalese, in an attempt to put an end to

the ugly situation. This is so because, the oft quoted phrase ‗the legal

fraternity being one large family' and the practice of, the Advocates during

the hearings in Court referring to the opposing Advocate as their ‗learned

friend or brother or sister', is not to be an empty formality. It is owing to

this comradeship between Advocates of the same Court that the Supreme

Court also in Nirankar Nath Wahi Vs. Fifth Additional District Judge,

Moradabad (1984) 3 SCC 531 observed that it is common knowledge that

when a leading member of the Bar is sued or sues in personal capacity, the

members of the Bar where he is practicing are more than reluctant to accept

a brief against their colleague and friend on account of personal relations or

on account of likelihood of embarrassment. It is again owing to this

brotherhood and fellowship between Advocates that even while representing

warring parties to a lis, they observe grace and courtesy and refrain from

displaying harsh overbearance or explosive vigour of voice even when they

professionally disagree with the proposition of law canvassed by the other

and at times to the disappointment of the client whose brief they hold. This

practise, of collegiality i.e. of respecting each other's views, listening to one

another and recognizing that they are both part of the common endeavour of

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seeking justice, amongst Advocates is so deeply engrained in the profession

of law as to find place in best traditions of the Bar. This is more so when the

members of the legal family, as in the present case, are fighting not about

any tangible property but about the use of the name used by them for

providing legal services.

12. It is for this reason that I have approached this adjudication not with

purely a legal approach but to arrive at a lasting legal solution and in the

sense of a Judge occupying the position of a father figure in a dispute of this

nature between Advocates of the Court, though it is normally the Chief

Justice who is conferred the mantle of being the father figure of the

judiciary, which constitutes the Bench and the Bar (Refer: Vijay Gopal

Dogra Vs. Punjab & Haryana High Court MANU/PH/0983/2001). I am

also of the view that the Courts, notwithstanding the codification of

procedural and substantive laws, cannot forget their genesis as ―problem

solvers‖ and if faced with a situation which demands them to perform such a

role, should not hesitate from doing so; of course in as long as it is not in

conflict with any statutory law.

13. Viewing the matter in this light, I am further of the opinion that giving

of any reasons by me for agreeing or disagreeing with the respective
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contentions or dealing by me therewith may itself become an obstacle to the

acceptance of the solution to the problem which this judgment endeavours to

offer. It cannot be forgotten that any finding by me of one being in the right

and which would necessarily be construed as the other being in the wrong

may rekindle the wounds which have been assuaged with passage of time. I

find the Supreme Court, in Mundrika Prasad Singh Vs. State of Bihar

(1979) 4 SCC 701, to have approved of the short High Court order--

Dismissed, (probably to avoid making observations) in dealing with a writ

petition by a Government Pleader claiming monopoly of all government

cases.

14. Though the traditional profession of law was individual centric, with

the goodwill and reputation being of legal acumen which can be only of an

individual and not of a juristic person / name, but eyes cannot be shut to the

immense goodwill acquired particularly in foreign jurisdictions, by years old

law firms, the faces representing which firms keep on changing. The

reputation attached to a name, under which the legal services are rendered, is

thus today a reality.

15. I accordingly dispose of these applications for interim relief with the

following directions:-

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(A)(i) The defendant, during the pendency of this suit, shall use the logo,

of which registration has been obtained, strictly as per the

registration certificate, particularly as to the font, size etc. and shall

use no other name / logo similar or deceptively similar to the

plaintiff's registered mark. However, in order to ensure that none is

led into believing even for a moment that ―Singh & Singh‖ and

―Singh & Associates‖ are one and the same and the possibility

whereof the defendant also admits though pleads that the plaintiff

was believed to be connected with the defendant, I direct the

defendant to, while so using its logo, add the words ―Founder

Manoj K. Singh‖ immediately thereunder. The defendant, if

desires, to add any other words / inscription, shall have liberty to

apply to the Court.

(A)(ii) I find the Division Bench of this Court in Goenka Institute of

Education & Research Vs. Anjani Kumar Goenka AIR 2009

Delhi 139 to have issued such direction to the defendant, in exercise

of powers under Section 13 of the Trade Marks Act, 1999,

notwithstanding having not found the plaintiff entitled to any relief.

This view was followed by another Division Bench of this Court in

Cadila Healthcare Ltd. Vs. Diat Foods (India) 173 (2010) DLT
I.As. No.7774/2012 & 7021/2013 in CS(OS) No.1173/2012 Page 25 of 32
141. The appeal thereagainst being SLP(C) No. 30710/2010 was

dismissed on 28th October, 2010.

(A)(iii) I clarify that such a direction has been deemed necessary because

my own experience shows that human mind tends to assume / read

the second / following word to be, what it is used to seeing reading

with the first one. Thus, a human, used to seeing / reading another

‗Singh' after the first ‗Singh' may presume / read the second word

also to be ‗Singh' on seeing / reading the first word ‗Singh',

particularly in the context of legal profession. Similarly a human

used to seeing / reading ‗Associates' after ‗Singh' may presume

‗Associates' to be following ‗Singh', unless cautioned of the

possibility of the second word being different i.e. ‗Singh'.

(A)(iv) To make sure that the aforesaid phenomenon and experience is not

confined to the undersigned, I looked up and found the experts to

have defined the same as ―Priming‖ and which is defined as an

implicit memory effect in which exposure to one stimulus

influences a response to another stimulus. The seminal experiments

on the said subjects appear to be of Meyer and Schvaneveldt who

found that people were faster in deciding that a string of letters is a

I.As. No.7774/2012 & 7021/2013 in CS(OS) No.1173/2012 Page 26 of 32
word when the word followed an associatively or semantically

related word and subsequent research has led to priming, now being

understood to be of many sorts. The said works report that priming

can occur following perceptual, semantic or conceptual stimulus

repetition and that its effect can be very salient and long lasting and

unconscious, affecting word choice on a word-stem completion test,

long after the words have been consciously forgotten. Keith E.

Stanovich and Richard F. West in their Paper ―On Priming by a

Sentence Context‖ published in the Journal of Experimental

Psychology have reported associative priming as a word that has a

high probability of appearing with the prime and is associated with

it and frequently appear together and context priming as where the

context speeds up processing for stimuli that are likely to occur in

that context and reported that these latter words are processed more

quickly than if they had been read alone. Similarly John A. Bargh,

Mark Chen and Laura Burrows in their Paper ―Automaticity of

Social Behaviour: Direct Effects of Trait Construct and Stereotype

Activation on Action‖ published in the Journal of Personality and

Social Psychology have reported that attention to a response

I.As. No.7774/2012 & 7021/2013 in CS(OS) No.1173/2012 Page 27 of 32
increases the frequency of that response, even if the attended

response is undesired.

(A)(v) The phenomenon is also described by some as ‗Word Association'

meaning ―stimulation of an associative pattern by a word‖ or ―the

connection and production of other words in response to a given

word done spontaneously‖. Derren Brown, a psychologist has

predicted people's word associations and has opined that humans

find it very difficult to disassociate words. Another author on the

basis of psycholinguistic studies has reported that words are not

stored in our mental lexicon as single items, but forming clusters

with related concepts. Yet others have reported that our brains use

some kind of connections between lexical items and that it

associates words with others.

A(vi) I have in Allied Blenders & Distillers Pvt. Ltd. Vs. Shree Nath

Heritage Liquor Pvt. Ltd. 211 (2014) DLT 346 dealt with the

subject of the importance of ‗word association' in the context of

trade names. Sigmund Freud also in his textbook ‗A General

Introduction to Psychoanalysis' as translated by G. Stanley Hall, in

the IVth Lecture contained in Part One thereof titled ‗A Psychology

I.As. No.7774/2012 & 7021/2013 in CS(OS) No.1173/2012 Page 28 of 32
of Errors', has authored that misreading consists in a complete

substitution; one substitutes another word for the word to be read

and there need be no connection in meaning between the text and

the product of the misreading; instance has been given of war times

when it is very common for everyone to read into everything which

contains a similar word structure, the names of the cities, generals

and military expressions which are constantly buzzing around us.

Another learned author Sara Brody in the book titled ―Teaching

Reading : Language, Letters and Thought‖ (2nd Edn., 2001) edited

by her, has cited certain works which have found that

comprehension is influenced by the misconceptions and pre-

conceived misunderstandings that readers posses before beginning

to read a passage and that when readers' prior knowledge conflicts

with material written in a text, readers tend to misread the text to

make it fit their previously formed schemata, whether they are

accurate or not.

A(vii) The phenomenon is also described by some schools as ―Prägnanz‖

which says that we tend to order our experience in a manner that is

regular, orderly, symmetric, and simple. As per the said school,

elements of objects tend to be perceptually grouped together and
I.As. No.7774/2012 & 7021/2013 in CS(OS) No.1173/2012 Page 29 of 32
that as individuals perceive the world, they eliminate complexity

and unfamiliarity so that they can observe a reality in its most

simplistic form and that eliminating extraneous stimuli helps the

mind create meaning. This is also described as reproductive

thinking i.e when a person is given several segments of

information, he/she deliberately examines the relationships among

its parts, analyzes their purpose, concept and totality and reaches

the "aha!" moment, using what is already known. Certain other

researchers have classified such phenomenon under the law of past

experience implying that visual stimuli are categorized according to

past experience and have reported that if two objects tend to be

observed within close proximity, the objects are more likely to be

perceived together.

(A)(viii) Experience of life with children, growing in an age of cellular

phones with facilities of ―Short Message Service‖, ―Whatsapp‖ and

the like and loaded with applications like ―autocorrect‖ or ―auto

spell‖ and ―predictive text‖ which correct spellings as per past

usage and which suggest the word on the first few alphabets thereof

being typed / punched on the keypad, again as per past usage and

similar such amenities / facilities on internet search engines, is
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indicative of the coming generations being more suscept to such

phenomenon than my generation.

(A)(ix) It cannot be lost sight of that persons looking for ―Singh & Singh‖

and ―Singh & Associates‖ in the context of Intellectual Property

Laws would not expect either of the two to have allowed such a

possibility and would expect their Advocates to take care, to protect

at least their own name. We have to judge the situation not only in

the context of Indians but also in the context of foreigners with

whom both, plaintiff and defendant, claim to be having large

dealings. Such foreigners are not expected to know of ‗Singh'

being a common surname in India and to thus be cautious.

(A)(x) I may also observe that I find it in the interest of both to have such

distinction, lest their clients form an opinion that if they cannot

protect their own name, they cannot be expected to protect the

clients' interest.

(B) Both are restrained from indulging in any act which may be

construed as soliciting or misleading the clients of the other and are

directed to, if find a client to have approached them under the belief

of dealing with the other, guide the client to the other. This is

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necessary in accordance with the high standards, each of them as a

legal professional is required to maintain. The Supreme Court in

the Bar Council of Maharashtra Vs. M. V. Dabholkar (1976) 2

SCC 291 observed that it has been universally understood,

wherever there is an organised Bar assisting in administering

justice, that an attorney, solicitor, barrister or advocate will be

suspended or disbarred for soliciting legal business and the

―snatching‖ species of solicitation are more revolting than

―ambulance chasing‖, advertising and the like.

16. Before parting, I again implore the parties to, instead of proceeding

with the suit, either agree to disposal thereof on above terms or on other

mutually acceptable terms.

No costs.

RAJIV SAHAI ENDLAW, J.

OCTOBER 14, 2014/pp I.As. No.7774/2012 & 7021/2013 in CS(OS) No.1173/2012 Page 32 of 32

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