Battle of the Firms – The Irony of IP Law Firms Being Sued for Trademark Infringement

Have you ever wondered who protects the IP rights of IP lawyers? What happens when an IP firm is sued for infringing IP rights of other law firms?  SpicyIP Intern Niyati Prabhu discusses a few such instances in this guest post. Niyati is a second year student pursuing B.A.LL.B. (Hons.) from NUALS, Kochi.

Battle of the Firms – The Irony of IP Law Firms Being Sued for Trademark Infringement

Niyati Prabhu

It is well known that companies across the world take their brands seriously and deploy law firms in order to safeguard their intellectual properties, be it their names, slogans, brands, taglines, marketing tools and (even phone numbers). But what happens when these protectors of IP seek the protection of their IPs? This post highlights some of these instances of law firms getting into disputes over their own IP primarily in the Indian context.

SC v. SG, and the high probity from the lawyers practising IP!

The most recent in the list is the Delhi High Court order in Sujata Chaudhri v. Swarupa Ghosh, whereby the court decreed the suit in favour of the plaintiff, noting that the respondent has changed its logo and thus settling the controversy. The plaintiff in question is the managing partner and founder of a Delhi-based IP firm Sujata Chaudhri and Associates, which has been using its trade mark since 2014, 3 years prior to the defendant. The controversy was regarding the use of a similar logo by the defendant (another lawyer) for its law firm. In the course of the litigation, the defendant argued that there cannot be a monopoly on the publicly available font ‘Edwardian Script ITC’, which was used in their logo. In response to this, the Court noted that the defendant could have used any other font out of the many options that are available. However, the most interesting observation of the Court was about the higher standards of integrity that are expected from lawyers and other legal professionals, “especially IPR lawyers, inasmuch as there is a duty cast upon them to ensure that they do not imitate or adopt a name or logo which is already in existence or in use by another person or entity, offering similar services”. This is noteworthy since if IP lawyers who are mainly involved in protecting their client’s intellectual property rights from being infringed by others get involved in complicated IP disputes of their own, one will inadvertently end up wondering ‘who will guard the guardians’. However, one can’t help but wonder what exactly is the legal basis as well as boundaries for expecting a higher standard of probity for one section of society based on their professional work. More reasoning on this count would certainly have been helpful.

The bundle of confusion over Fox and Mandal

Similarly, in Fox and Mandal v. Somabrata Mandal and Ors., the dispute concerned the respondent’s use of the mark ‘Fox and Mandal’ for his Delhi-based law firm and the assertion that his firm has been incorporated since 1896. The petitioner here is the age-old Indian firm Fox and Mandal which was established in 1896. Whereas, the respondent’s firm, though established by the then partners of the plaintiff, was established in 1986, bearing the same name.  The respondent is the son of late Mr. Dinabandhu Mandal, who passed away in 2020 and who was a partner in both firms. The petitioner objected to the respondent’s use of the ‘Fox and Mandal’ mark and also against the assertion that the respondent’s firm was incorporated in 1896, when it was, in fact, established in 1986. However, the respondent argued that they have been claiming such association since the formation of its firm in 1986 without any objection from the petitioner till now. The Calcutta High Court, however,  noted that the balance of convenience was inordinately in favour of the petitioners since they have been uninterruptedly using the name ‘Fox and Mandal’ since 1896 and are therefore the prior users. Additionally, with regard to Dinabandhu Mandal’s connections with the firm, the Court noted that the goodwill and trademarks of the firm are partnership property which does not belong to any partner individually. It also stated that the respondent’s claim of being associated with the petitioner firm can be misleading and that there is a scope of confusion if not deception. Accordingly, an interim order was passed restraining the respondents from using the trademarks of ‘Fox and Mandal’ or representing themselves as being affiliated with the petitioner firm.. One must note that while the Court’s interpretation of ‘misleading’ and ‘deceptive’ are distinct on the basis of the element of intention involved, there will nevertheless be consequences to be borne in both instances. The matter went before the Supreme Court too, however now the parties have decided to resolve the dispute amicably, perhaps ending the intense feud.

My heart will.. the list goes on!

And of course, who can forget the Delhi High Court’s 2014 order in  Prathiba M. Singh v. Singh and Associates, where Justice Endlaw utilised various psycholinguistic studies and noted the probability of Singh & Singh being confused with Singh & Associates was likely to happen and ordered the defendants to include ‘Founder Manoj K. Singh’ below the logo of the firm. As was stated in this post, these two names can be easily conflated as one through the usage of autocorrect or even google as the name ‘Singh’ is so predominant in India and the situation was judged with regards to foreign clients as well, since they might likely misread “Singh & Associates” as “Singh & Singh” or vice versa. Additionally, the Court mandated that if either party had discovered that a client had approached them thinking they are the other, they must direct the client to the other. Fortunately, the matter was settled amicably in due course in 2016. 

Apart from the tussle with Singh and Associates, Singh & Singh (‘S&S India’) was also involved in another trademark infringement suit with a Canada-based law firm Singh + Singh Lawyers LLP (‘S&S Canada’). In this case, the Delhi High Court restrained S&S Canada from infringing the trademark of S&S India. The Court noted that S&S Canada was predominantly practising only in Canada while S&S India’s goodwill and reputation was globally renowned in addition to which explained why there was a prima facie case in favour of S&S India. As Adyasha points out in some detail in this post, the ad interim injunction was given quite easily by the Court without demonstrating, for instance, irreparable harm as S&S Canada does not practice in India. And similarly, the rationale was not provided for satisfying the balance of convenience test. One can’t help but wonder whether not providing explanations for these exceptional remedies would tone down the gravity of interim injunctions.

As noted above, law firms going all in to protect their IP is not just restricted to India but is a global

phenomenon (see this linkedin post with 20 such examples!). In the US, in a classic ‘David v. Goliath’ story, Fish IP Law sued Fish & Richardson seeking a judgment that its name and logo do not violate the megafirm’s trademarks and that the big shot firm could not demonstrate a common-law ownership interest in the word ‘Fish’. However, the suit was eventually dismissed when the big Fish assured the little Fish that it would not sue them for trademark infringement.

Aside from law firms getting involved in various IP disputes, there are instances of legal reporting outlets filing lawsuits for trademark infringement! Notable among these is Live Law Media Pvt Ltd v. Tiya Law Library & Ors., wherein the Delhi High Court directed the defendants to deactivate the website ‘livelaw.info’ and its domain name since it was deceptively similar to the plaintiff’s registered trademark ‘LiveLaw’ which had acquired the status of a well-known mark. While the exclusivity of the use of the mark ‘Live Law’ by the plaintiff extends only to the use of the words ‘Live’ and ‘Law’ as a combination or in conjunction in the same order, the exclusivity, of course, does not extend to the usage of the words disjunctively.

Against the backdrop of the above discussion, it is understandable that law firms are often named after the respective surnames of their founders, however, in instances where surnames are quite prevalent in India, people are bound to get confused and might associate one with the other. This might result in one firm inadvertently encashing the goodwill of the other with the same surname. Observation as laid down in Sujata Chaudhri, regarding legal professionals to uphold higher standards of integrity and to not adopt or imitate trademarks that are already in use by another may seem relevant here. However, one can’t help but wonder if there is any legal basis for expecting a higher standard of probity from IP lawyers. Also, what does this higher standard even mean? Will it fall beyond the four corners of the trademark law, just because the parties involved are IP lawyers? Well looks like we’ll have to wait for another order on this.

If our readers are aware of more such examples, please feel free to share them in the comments below.