Calcutta High Court restrains Somabrata Mandal from using trademarks of Fox & Mandal, claiming connection with firm

The Calcutta High Court recently ordered Somabrata Mandal not to use the Fox & Mandal trademark or attempt to represent in public that he has any connection with the firm [Fox and Mandal v. Somabrata Mandal]..Justice Ravi Krishan Kapur said that the law firm has made out a strong prima facie case that Somabrata has been infringing its rights by using the registered trademark."I find that there is a direct attempt by the Somabrata to mislead, if not deceive. The acts complained of suggest that there exist a connection between the law firm (Fox and Mandal) and the Somabrata and his law firm Fox Mandal. Misrepresentation lies in the heart of a passing off action. In describing that the defendants have been carrying on business since 1896 there is undoubtedly scope of confusion if not deception. Prima facie, there appears to be an attempt by them to trade on the goodwill and reputation of the plaintiff law firm," the judge held in an interim order passed on November 15.Fox & Mandal is bound to suffer irreparable prejudice if Somabrata is permitted to carry out the use of the trademark without lawful justification, the judge added..Somabrata is the son of the late Dinabandhu Mandal, a former member of Fox & Mandal. The dispute arose after the death of Dinabandhu on June 30 this year. It was claimed that Somabrata was representing in public that he had a connection with Fox & Mandal, which was founded in 1896 by British lawyer John Kerr Fox and Gokul Chandra Mandal. Somabrata's firm Fox Mandal was founded in 1984 by the then members of Fox & Mandal. Exception was taken to Somabrata claiming to have been associated with Fox & Mandal and also claiming that his firm Fox Mandal is one of the oldest and largest law firms in the country. It was argued that he was only using its goodwill for his benefit.On the other hand, Somabrata argued that Fox & Mandal was a family firm which was entirely controlled by his father Dinabandhu. He pointed out that his firm Fox Mandal has been claiming to be associated with the plaintiff firm ever since it was founded in 1984, and that there has been no objection of any sort since then..The Court noted that disputes between Dinabandhu and his youngest son, who is a partner at Fox & Mandal, were resolved amicably and the firm was reconstituted in March this year. A dispute over the share of the late Dinabandhu in the partnership business is also pending before the High Court..Justice Kapur took note of clause 17 of the reconstituted partnership deed, by virtue of which Somabrata is only entitled to monetary claim in the plaintiff law firm's goodwill. Also considered was Section 55 of the Indian Partnership Act of 1932, which allows selling of goodwill and restraining a former partner from using the said goodwill.It was also noted that Somabrata had no role in the plaintiff law firm and that his wife, who was one of the members, had already resigned from the firm in 2020."Prima facie, the consequence of Clause 17 read along with Section 55 of the Act is that, Somabrata as heir or legal representative of the late Dinabandhu Mandal is only entitled to a monetary claim in the profits and the goodwill of the plaintiff firm and not to any right over the use of its name or be permitted to represent to the public of having an association or connection with the services being rendered by it," the judge opined.The right to use the name of the plaintiff firm, the judge said, and to claim to have any association with the same cannot accrue as a vested right on the Somabrata when the accounts of the deceased partner or his estate remain unsettled. In fact, any such right would mean giving him an entitlement which does not exist in this case, the Court added.After passing the interim order, the Bench adjourned the matter for further hearing on December 15..Senior Advocates SN Mookherjee and Ratnanko Banerjee along with Advocates Soumya Roychowdhury, Souvik Chowdhury, Paritosh Sinha and Tirthankar Das appeared for Fox & Mandal.Senior Advocate Pinky Anand along with Advocates Promit Roy, Mamta Tiwari, Partha Ghosh, Ajay Chaubey, Savinder Singh, Biswarup Mukherjee, Debmalya Ghosal, Kreeti Gupta, Saudamini Sharma, Soumya Paul and Vinayak Chaubey represented Somabrata Mandal..[Read order]