A trademark dispute between two intellectual property law firms invites obvious commentary. The more interesting part is the two defences raised — both of which arise regularly and both of which failed.
The dispute
In Sujata Chaudhri v. Swarupa Ghosh, the Delhi High Court ruled in favour of Sujata Chaudhri of Sujata Chaudhri IP Attorneys in a suit for trademark infringement, copyright infringement and passing off, restraining another intellectual property lawyer, Swarupa Ghosh, from using a deceptively similar logo.
On the face of it the case looked straightforward. The marks closely resembled each other, and the plaintiff had used hers since 2014 against the defendant’s use from 2017. The defences are what merit attention.
”The font is publicly available”
The defendant’s first contention was that both logos used the font ITC Edwardian Script, freely available in the public domain, so nobody should enjoy a monopoly over it.
The court rejected this: just because a font is openly available does not mean that same font has to be used, when a multitude of other options exists.
The reasoning is worth extracting, because the argument recurs whenever a mark incorporates a common element. Availability of a component is not a defence to copying the combination. A font in the public domain may be used by anyone — for a different name, in a different arrangement, to a different overall effect. What the defendant could not explain was why, among the vast range available, she chose the one that produced a logo closely resembling the plaintiff’s.
”You knew about us in 2020”
The second contention was that the plaintiff had falsely claimed to have learned of the defendant’s use only in mid-2022, because the defendant had pitched her services over LinkedIn and sent a schedule of charges in 2020 — putting the plaintiff on notice and raising acquiescence.
The court examined screenshots of the LinkedIn conversation filed in evidence and concluded that the logo did not appear anywhere in the defendant’s icon in the message tab. Sharing a schedule of charges could not therefore establish that the plaintiff had acquiesced to the defendant’s logo.
That is the correct analysis, and a useful one. Acquiescence requires knowledge of the specific use complained of. Awareness that a competitor exists — even direct contact with them — is not awareness of their branding. A defendant relying on delay must show the plaintiff knew what they were failing to object to.
The observation on professional standards
The court remarked that a higher standard of integrity is generally expected from lawyers and legal professionals, particularly those practising intellectual property law, who have a duty not to indulge in such practices.
That observation carries no independent legal weight — the outcome would have been the same for any defendant. But it registers something real. A practitioner who advises clients on clearance searches and the risks of adopting similar marks is poorly placed to argue that a resemblance was innocent.
The takeaways
- A publicly available font is no defence — the choice among many options is what matters.
- Acquiescence needs knowledge of the specific use, not merely of the party.
- Prior use prevailed — 2014 against 2017.
- Screenshots decided the acquiescence point — contemporaneous evidence of what was visible.
Frequently asked questions
Is using a publicly available font a defence to logo infringement? No — the court held that availability of a font does not require its use when many alternatives exist, and the resulting similarity is what matters.
What does acquiescence require? Knowledge of the specific use complained of, over a period, without objection. Awareness that a competitor exists is not sufficient.
Does prior use matter where both parties are unregistered? Yes — prior use is central, and here the plaintiff’s use from 2014 prevailed over the defendant’s from 2017.
Can a logo attract both trademark and copyright protection? Yes — the artistic work in a logo is protected by copyright alongside any trademark rights, and both were pleaded here.
Useful official resources
- The Trade Marks Act, 1999
- Delhi High Court