Calcutta High Court Restrains Rival's Use Of 'Fox & Mandal' Name, Says Heir Of Ex-Partner Cannot Claim Law Firm's Goodwill
The Calcutta High Court has held that a subsequent user of a trade mark cannot claim rights in the goodwill of a partnership firm merely by asserting an ancestral or familial connection with one of its former partners, and has consequently granted summary judgment in favour of the 1896-founded law firm Fox & Mandal in a passing off action.
Justice Ravi Krishan Kapur held that the defendants had no real prospect of successfully defending the claim and that there were no triable issues warranting a full-fledged trial. The Court found that the plaintiffs had established the three essential elements of passing off, namely reputation, misrepresentation and likelihood of damage.
The Court rejected the defendants' claim that “Fox & Mandal” was a family mark and that Somabrata Mandal, as an heir of a former partner, had a right in the goodwill associated with the name. It held that goodwill generated by a partnership is a partnership asset and that the firm's marks do not belong to an individual partner or his heirs.
“There can be only one mark, one source and one proprietor,” the Court observed, holding that the defendants had failed to demonstrate any legal right to claim an association with the plaintiff firm.
The Court ultimately passed a decree of perpetual injunction restraining the defendants from holding themselves out as associated with Fox & Mandal, claiming the firm's 1896 legacy, passing off their legal services as those of the plaintiffs, or using the marks “Fox & Mandal”, “Fox and Mandal” and “F&M”.
The judgment arose from an application under Order XIII-A of the Code of Civil Procedure, 1908, as amended by the Commercial Courts Act, 2015. The defendants had not filed a Written Statement despite service of the writ of summons and expiry of the prescribed period.
Case No: IP-COM/6/2025
Case: FOX AND MANDAL AND ANR. Vs SOMABRATA MANDAL AND ORS.