Fox Mandal vs. Fox & Mandal
Introduction
The decision of the Trademark Registry to permit Debanjan Mandal, the partner of the Fox & Mandal, to get the brand name Fox & Mandal registered in the names of himself and the other partners Arun Mandal and Ashok Dhar, while fraudulently dropping the name of partner late Dinaba, has been contested by Som Mandal, the managing partner of Fox Mandal (FM), through a writ petition before the Calcutta high court. It should be emphasized that Fox & Mandal was the name of the company’s Kolkata office alone up until the split.
[Image Sources : Fox Mandal And Associate Real-estate]
The “FoxMandal” name and “FM” emblem were created and registered by Mr. Som Mandal in the early months of 2002, and it wasn’t until the partners of Fox& Mandal, including his own father, sought for the registration in 2006 that it was denied by the Trademark Registry.
Soon after, Som Mandal sent the registry a No Objection Certificate stating that Fox and Mandal solely conducted business in and around Kolkata, which caused the registration of Som Mandal’s “Fox Mandal” as an Associate Mark to be renewed.
In a later registration, Fox & Mandal changed the font and tacked on “Solicitors and Advocates.” The Kolkata-based “Fox & Mandal” was operating without making any changes to the Trademark Registry after the passing of Som Mandal’s father, but in April 2022, they applied for the Registration in the names of the three owners, dropping the name of Mr. Dinabandhu Mandal, which was not permitted without getting Mr. Som Mandal’s permission. Mr. Som Mandal is not only his legal heir, but also the owner of the brand name “FoxMandal”.
The petitioner firm is a partnership with a registered business name that offers legal services, legal advice, consulting, and related services. Since the company’s incorporation in 1896, it has continuously and extensively used the trade name “Fox & Mandal.” The firm’s legal name also contains the words “Fox & Mandal.” The firm has a legendary reputation and tremendous goodwill throughout the legal community. The business is the proprietor of the trademark “Fox & Mandal,” which was registered on March 7, 2006, in Class 42, with a user date stated as “since January 1, 1896.”
The defendant, Somabrata, is a direct descendant of late Fox & Mandal associate Dinabandhu Mandal. After Dinabandhu’s death on June 30 of this year, the conflict erupted. It was said that Somabrata gave the appearance of being associated with the petitioner firm in public. The respondent company, Fox Mandal, was founded in 1984 by the former members of Fox & Mandal. Criticism was levelled at Somabrata’s assertions that he was associated with Fox & Mandal and that his firm, Fox Mandal, is one of the largest and oldest law firms in the country. He was accused of simply taking advantage of its goodwill for his personal gain. The current lawsuit was brought against the respondent by the petitioner firm for trademark infringement and passing off.
The petitioners argue that the respondents have been misrepresenting themselves by asserting that they were “founded in the year 1896” and as a result, that they are one of the oldest and largest law companies in India while continuing to collaborate with the petitioner firm.
The Court noted that disputes between Dinabandhu and his youngest son, a partner at Fox & Mandal, had been amicably resolved and that the business had undergone a restructuring in March of this year. The ownership position that the late Dinabandhu held in the partnership firm is the subject of another lawsuit currently before the court, C.S. No. 178 of 2022 (Fox & Mandal & Co. & Anr. Vs. Somabrata Mandal & Ors.).
the respondent is only granted a financial claim in the profits and goodwill of the petitioner firm and is not granted any rights over the use of the petitioner firm’s name or the ability to represent to the general public that they are associated with or connected to the service, the court stated while relying on Section 55 of the Indian Partnership Act, 1932 and Clause 17 of the reconstituted Partnership Deed dated 27 October, 2014.
The bench agreed that the firm’s reputation cannot be ignored when a partner passes away. Respondent No. 1’s claim, however, is limited to a financial one in light of Clause 17 of the partnership agreement. As a result, the petitioner was given interim relief. After passing the interim order, the Bench adjourned the matter for further hearing on December 15.
Conclusion
The present instance provides greater insight into the question of whether someone is relying on someone else’s reputation or goodwill in order to generate money. We understand that the terms “misleading” and “deceptive” have distinct connotations after the Court’s observation that there was an attempt to mislead in the current case. It makes a big difference whether the mistake was intentional or not. One can unintentionally mislead someone, but not unintentionally trick them. While both sorts of behaviour are prohibited, one must still face with the consequences in both situations and is prohibited from taking undue advantage of another person’s reputation.
Author: Tanya Saraswat, in case of any queries please contact/write back to us at support@ipandlegalfilings.com & IP & Legal Filing.
