Lex Nexus law firm forced to change its name
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Reed Elsevier is the registered proprietor of the trademark LEXISNEXIS, which it also uses as a business name. Reed Elsevier learned of the existence of the defendant law firm as far back as 2002. When the defendant applied to register LEX NEXUS as a trademark, Reed Elsevier opposed the application. In November 2006 the defendant announced on its website that Lex Nexus had been renamed Hathi and Partners.
However, despite this change of name, in or around October 2007 the defendant resumed use of the trade name Lex Nexus. Reed Elsevier contended that a full service law firm bearing the name Lex Nexus had come into operation in August 2008 after the merger of Hathi and Partners with and into Lex Nexus. This led to the commencement of an action by Reed Elsevier in the Delhi High Court seeking both interim relief and a permanent injunction. Even when responding to the legal notice(s) issued by Reed Elsevier, the defendant offered no plausible explanation for having again adopted the trade name that it had apparently given up in 2006.
The court came to the conclusion that:
- the defendant’s trade name was deceptively similar to Reed Elsevier’s registered trademark; and
- use of the name in relation to services similar to those in respect of which Reed Elsevier’s mark had been registered constituted trademark infringement.
The court further observed that the harm and injury which would be caused to Reed Elsevier if the defendant were permitted to continue trading under the name Lex Nexus would be incalculable. Consequently, it granted an interim injunction restraining the defendant from using the name Lex Nexus or any other trade name deceptively similar to Reed Elsevier’s trademark as part of its trading style, as a trademark in relation to the services provided by it, as part of a domain name or in any other manner until further hearing of the interim application.
Interestingly, in compliance with the interim order, the defendant has seemingly changed its domain name from 'lexnexus.com' to 'bruschambers.com'.
Rajiv Suri, Rouse, India
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