Calcutta High Court Bars Ex-Partner's Heir From Using Fox & Mandal Mark, Says Goodwill Belongs To Firm

The Calcutta High Court on 24 August permanently restrained Somabrata Mandal and his law firm from holding themselves out as connected with Fox and Mandal or using the marks “Fox & Mandal,” “Fox and Mandal” and “F&M.”

A Single Judge Bench of Justice Ravi Krishan Kapur observed that “goodwill generated by a partnership is a partnership asset. The marks are the property of the firm and do not belong to any person or partner individually or his heirs.”

Fox and Mandal is a partnership constituted in 1896 by English attorney John Kerr Fox and Indian attorney Gokul Chandra Mandal. It has continuously used the mark “Fox & Mandal” since then and obtained trademark registration in 2006, claiming use from 1 January 1896. The firm underwent several reconstitutions over the decades. Its present partners are Asoke Kumar Dhar and Debanjan Mandal.

Defendant No. 2, a partnership firm, was constituted in 1984 by some of the persons who were then partners of the plaintiff firm, including Late Dinabandhu Mandal. Defendant No. 1, Somabrata Mandal, was Dinabandhu Mandal's son and legal heir. However, he had never been a partner or employee of the plaintiff firm.

The plaintiffs alleged that the defendants, through publications, advertisements and their website, created a misleading impression that they were connected with or represented Fox and Mandal. The defendants traced their history to 1896 and described themselves as “India's original and oldest full service law firm.”

The High Court had already restrained the defendants from holding themselves out as the plaintiff firm through an interim injunction granted in November 2022. The injunction survived an appeal, a Special Leave Petition before the Supreme Court and a further appeal against its confirmation.

On Somabrata Mandal's claim as an heir, the Court noted that a separate suit had already settled his entitlement. He had received his entire monetary entitlement in full and final satisfaction. It therefore held that “the defendant no.1 has no legal right of any kind whatsoever in the firm and consequently cannot claim any right in respect of the assets of the same.”

The Bench also rejected the attempt to distinguish Somabrata Mandal's claim as an heir from his claim in his individual capacity. It observed:

“There are two distinct hats which the defendant no.1 attempts to wear. One as son and heir of Late Dinabandhu Mandal. The other eo nomine in his own right... This is the magic with legal personalities. The partnership remains. Everything else is history and counts for little in these cold Commercial Courts.”

Further, the Court found no merit in the defendants' “family mark” argument. It noted that John Kerr Fox, one of the founding partners, was a stranger to the Mandal family and held that accepting the argument would lead to the “irrational result” of conferring rights on descendants who had no connection with the firm.

It applied the classic trinity of reputation, misrepresentation and damage in a passing off action, and found that the plaintiffs were the admitted prior users of the mark from 1896, whereas the defendants claimed user only from 1986. It held that “a prior user has a superior right and is entitled to protection in an action for passing off against a subsequent user.”

The Court then held that the defendants' attempts to establish a connection with Fox and Mandal were intended to create confusion about the identity of the firm. It observed:

“The deliberate acts of the defendants are aimed towards creating a kind of deception or confusion and the likelihood thereof as to who is the real 'Fox and Mandal' and that is where the Rubicon has been crossed... In this context, any free riding is impermissible. There is nothing such as good and bad free riding.”

Finding that the defendants had failed to raise any triable issue and that their defences were “sham and incapable of succeeding,” the Bench held that the case was fit for summary judgment.

Accordingly, the High Court passed a decree of perpetual injunction restraining the defendants from holding themselves out as connected with the plaintiff firm, claiming any legacy in its 1896 year of establishment, passing off their legal services as those of the plaintiff, or using the marks “Fox & Mandal,” “Fox and Mandal” or “F&M.”

After the judgment was pronounced, the defendants sought a stay of the decree. The Court rejected the request.