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Singh v Singh name row: S&A responds, claims S&S ‘piggy-backing’ on its rep

Singh & Singh / Associates: Same or different?
Singh & Singh / Associates: Same or different?

Singh & Associates (S&A) responded to Delhi-based advocate Pratibha Singh’s Delhi high court claim of passing off her firm’s name Singh & Singh, asserting that she misrepresented facts, had no exclusive rights to the name “Singh”, and that her firm stood to gain from S&A’s reputation, and not the other way around, in the event of firm name confusion. S&A also filed an application for rejection of her plaint, for lack of cause of action.

Pratibha Singh, who is the sole proprietor of Delhi-based intellectual property (IP) law firm Singh & Singh (S&S) had filed a trademark infringement suit for damages of Rs 21 lakh against S&A in the high court at the end of April, claiming that the firm was using a deceptively similar mark and name to her firm’s name and mark, “to capitalise on the goodwill generated by the firm”.

She also filed an application for stay against S&A, restraining them from using the name and mark “Singh & Associates”, or any other mark or name “deceptively similar” to “Singh & Singh”, including either as a trade name or as a domain name.

In the application she also sought orders restraining S&A from “contacting clients/associates of the plaintiff and from writing unsolicited emails, letters, newsletters etc”, giving the impression that her firm and S&A are connected.

S&A in a statement told Legally India: “If ever there is a chance of confusion taking place or any party piggy-backing on another's greater reputation and goodwill, it is of the plaintiff doing it on the Defendant's reputation; as clearly by full documentary proof, the defendant is a bigger law firm than the plaintiff.”

Pratibha Singh alleged various instances where S&A founding partner Manoj K Singh indulged in misrepresentation and made unsolicited approaches to her firm’s foreign associates and clients, but S&A denied the allegations and said that it has never represented itself as being associated or connected with her “in any manner ever”.

“Singh & Associates, if they’re happy with a media and website victory [so be it],” she said.

She had stated in her plaint that the cause of action against S&A first arose in October 2010 when she noticed a published article written by two S&A lawyers, analysing a case argued by her, reported legal website Bar & Bench last week, as re-reported by Legally India at the time.

But S&A claimed that Pratibha Singh became aware of the firm before 2010. They said that the firm had attended “several international conferences” with Pratibha Singh since 2006, including the INTA (International Trademark Association) annual conference in 2007, in the attendee directory of which Pratibha Singh’s name was listed directly below S&A.

Pratibha Singh responded: “I came to know of this confusion which was happening, in 2010, and I called up his office, emailed them, and called him again, that don’t do this.”

She added: “There are so many people in those directories, I don’t even read those directories. They can pick up isolated instances like this. I have actual evidence, and not that I’m scared of sharing it but I don’t want to hear from the judge.”

S&A challenged Pratibha Singh’s assertion that she had commenced use of the trademark “Singh” since 1997. According to S&A, even though Pratibha Singh admitted that she had applied for trademark registration only in 2005 “surprisingly” the trademark was later amended to add a retrospective date of use. S&A was founded by Manoj Kumar Singh in 2002.

S&A added that she also brought no document on record to prove prior use, barring an “unrelated and irrelevant” document, the “genuineness” of which was “disputed” by S&A.

Further, S&A claimed that the trademark certificate granted to Pratibha Singh revealed that she was trading in her own full name and not in the name of Singh & Singh, also contradicting her alleged use of the trademark “Singh”.

Questioning her exclusive proprietary right in the “extremely common” Indian surname “Singh”, S&A said that the two trademarks were clearly distinguishable on more relevant factors such as use of the word “Associates” in the full name of S&A, the distinct logo of S&A in a Gothic font as opposed to the type-set used by Singh & Singh, and the sole-proprietor nature of S&A as opposed to the indication of “two persons named Singh”, behind Singh & Singh’s practice.

S&A reasoned that founding partner Manoj Singh, who had a “bona fide claim to his personal name” had commenced the practice under his own family name.

"Use of name 'Singh & Associates' under no stretch of imagination had caused or was likely to cause confusion to the plaintiff's clients (existing or future),” said S&A.

S&A and Pratibha Singh declined to share a copy of the petition with Legally India.

Justice Kailash Gambhir had appointed senior advocate Vinay Bhasin as mediator in the matter on 1 May, and mediation was scheduled for 11 May. In the next hearing before Gambhir on 22 May it was observed that attempts to resolve the dispute through mediation had failed.

Advocate Chander Lall with senior advocate Rajiv Nayyar acted for Pratibha Singh.

S&A acted through S&A managing partner Vijay K Singh and principal associate Nilava Bandopadhyay and senior advocate Rajiv Dutta.

The matter was last heard on 6 August and the next hearing is scheduled for 29 November, in the court of Justice Kailash Gambhir.

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