In an interesting turn of events, the Delhi High Court in Sujatha Chaudhri Vs Swarupa Ghosh ruled in favour of Sujata Chaudhri of Sujata Chaudhri IP Attorneys in a trademark infringement, copyright infringement, and passing off suit restricting another intellectual property lawyer Swarupa Ghosh from using a deceptively similar logo.

By merely taking a short glance at the marks in contention, one can clearly deduce that the defendant’s mark bears a close resemblance to the plaintiff’s mark. Apart from that, the plaintiff had also been using the mark since the year 2014 while the defendant’s use of the mark commenced only in the year 2017. While these facts might make it seem like it was a clear-cut case of infringement, there were a few noteworthy contentions raised by the defendant that would most certainly pique one’s interest.

The defendant raised two important contentions. The first was that both the logos had made use of the font ITC Edwardian Script which is a font openly made available in the public domain. Hence, the defendant was of the opinion that no one should be able to enjoy a monopoly over the same. The second contention was that the plaintiff had falsely submitted that they came to know about the defendant’s use of the mark only in mid-2022. The underlying rationale for this contention was that the defendant had pitched their services to the plaintiff over LinkedIn and sent them a schedule of their charges in the year 2020 itself making their existence known to the plaintiff and therefore the doctrine of acquiescence would come into the picture.

However, both these contentions were rejected by the Court. With regard to the first contention, the Court was of the opinion that just because a font is openly available, it does not mean that the same very font has to be used by the defendant when there is a multitude of font options available. And with respect to the second contention, the Court looked into screenshots of the conversation on LinkedIn between the plaintiff and the defendant which was submitted as evidence, and concluded that since the logo was not present anywhere in the defendant’s icon in the message tab, the mere fact that the Defendant had sought to share her schedule of charges to the Plaintiff cannot be used by the Defendant to claim that the Plaintiff had acquiesced to the Defendant’s logo.

The Court also went on to remark that there is a higher standard of integrity that is generally expected from lawyers and legal professionals especially those practicing in the field of intellectual property laws, and they have the duty to not indulge in such wrongful practices. This is a commendable observation, since, in general, lawyers and other legal professionals are expected to exercise a reasonable degree of care in all their undertakings. In this case, the defendant had clearly failed in doing that and so the Court ensured that the rights of the prior user were protected.

This article has been authored by Adlin Mini, Selvam & Selvam. Adlin graduated from law school at Tamil Nadu National Law University, Trichy, and pursued her Master’s in Intellectual Property Rights & Trade Laws from Christ University, Bangalore.