Calcutta High Court: The Single Judge Bench of Ravi Krishan Kapur, J., granted summary judgment in favour of Fox & Mandal in a passing-off dispute against the defendants. The Court held that Fox & Mandal had established prior use, reputation and goodwill dating from 1896, while the defendants had no legal entitlement to the firm’s goodwill or marks. Finding no real prospect of a successful defence, the Court permanently restrained the defendants from representing any association with Fox & Mandal.
The Court observed that an action for passing off can succeed even if there is a likelihood of injury or damage. Likelihood of damage is sufficient. Deliberate violation of restraint orders, amount to a misrepresentation and deception to the public at large. All the issues sought to be raised by the defendants were a camouflage only to delay and procrastinate matters.
Background
The dispute arose from the plaintiffs’ allegation that the defendants were representing themselves in a manner that created the impression that they were connected with Plaintiff 1, the historic Fox & Mandal firm, established in 1896 by John Kerr Fox, an English attorney and Gokul Chandra Mandal, an Indian attorney. The firm had continuously carried on legal and related professional services under the name “Fox & Mandal” since its establishment. It had obtained trademark registration in Class 42 and was also the proprietor of several other marks. Over more than a century, the partnership underwent several reconstitutions and had included prominent members of the Mandal family as partners at different times. The Plaintiff 2 was a limited liability partnership subsequently established by the firm and its partners.
The defendants were also engaged in the legal profession. Defendant 2 was a partnership firm constituted in 1984 by several persons, including certain then-partners of the plaintiff firm. Defendant 1, however, had never been a partner or employee of the plaintiff firm. He and his wife were associated with Defendant 2 and had consciously remained outside the plaintiff partnership.
According to the plaintiffs, the defendants used publications, advertisements, brochures, online articles, websites and other materials to trace their history and reputation to the plaintiff firm. The plaintiffs particularly objected to representations suggesting an association with the firm’s establishment in 1896 and its historical legacy. The plaintiffs had already obtained substantial interim protection by an order dated 15 November 2022, restraining the defendants from holding themselves out as Fox & Mandal or representing any connection or relationship with the services provided by the plaintiff firm. The defendants challenged that order before the appellate court, but the appeal was dismissed. A subsequent special leave petition before the Supreme Court was withdrawn. The interim order was ultimately confirmed by the High Court on 27 September 2023, and the subsequent appeal against that order was also dismissed. The plaintiffs thereafter contended that there were no genuine or triable issues requiring a full trial. The defendants had not filed a written statement despite service of the writ of summons and expiry of the prescribed period. The plaintiffs argued that the essential elements of passing off were established through the pleadings and materials before the Court and that the defendants had no real prospect of successfully defending the claim.
The defendants advanced several arguments. Their principal case was that Defendant 1, as one of the legal heirs of a former partner of the plaintiff firm, possessed rights in the shared goodwill of the business. It was argued that “Fox & Mandal” was effectively a family mark and that members of the Mandal family could not be deprived of the right to use it. The defendants also relied upon the fact that their mark had been registered before the plaintiff firm’s mark and contended that a no-objection certificate had been granted to the plaintiffs for registration of the mark. The defendants further argued that the plaintiffs were disentitled from relief because of delay and acquiescence. They contended that the plaintiffs had failed to establish actual damage and that the existence of other family members using the name demonstrated that the plaintiffs could not claim exclusive rights.
Decision and Analysis
The Court began its substantive analysis by explaining the basic principles governing passing off. It identified the “classic trinity” of reputation, misrepresentation and damage to goodwill as the essential components of a passing-off action. The Court emphasised that “Misrepresentation lies at the heart for an action of passing off” and that the question on whether the use of a particular indicia results in passing off the goods or services as those of the plaintiff is, in substance, a question of fact. The principle of law is that nobody has the right to represent his or her goods as the goods of somebody else which include the use of particular words, style, marks or indicia. This has also been described as a source identifier. In a passing-off action, the Court is not concerned with the truth or falsity of the statements in the defendant’s advertisements except so far as to induce the belief that the defendant’s goods or business or services are that of the plaintiff.
The Court relied significantly upon the Supreme Court’s decision in Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145. The principle emerging from that decision was that passing off protects both the reputation of the plaintiff and the public from deception. It is sufficient if the defendant’s conduct creates a likelihood of confusion in the minds of actual or potential customers. An intention to deceive is not essential, although intentional misrepresentation may strengthen the inference that the defendant is attempting to exploit the plaintiff’s reputation. Applying these principles, the Court found that Fox & Mandal was unquestionably the prior user.
The Court noted that the deliberate acts of the defendants were 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. The Court observed that attempt of the defendants to create an association, commercial or otherwise, with the firm is the misrepresentation to the public. There is nothing such as good and bad free riding. All the impugned acts were aimed towards creating confusion and deception as to the source of the defendants and any attempt to claim such association with the plaintiffs is ultimately targeted at causing damage or the likelihood thereof to the plaintiffs. The impugned acts clearly suggest that a connection still exists between the plaintiff firm and the defendants. Such deception is anchored not only from the indicia being relied on by the defendants but also from a cumulative appreciation of any relation that the defendants seek to unlawfully portray. The plaintiff firm had used the relevant marks continuously, extensively and uninterruptedly since 1896. The defendants, on the other hand, were subsequent adopters and claimed use only from 1986. The Court therefore applied the settled principle that a prior user ordinarily enjoys superior rights against a subsequent user in a passing-off action.
The Court rejected the defendants’ assertion that the goodwill attached to the name belonged jointly to the Mandal family or to individual members of the partnership. The Court, citing Kerly’s Law of Trade Marks and Trade Names, held that ‘Goodwill generated by a partnership is a partnership asset’, and further relied on Bhagwan Dass Khanna Jewellers v. Bhagwan Das Khanna Jewellers (P) Ltd., 2012 SCC OnLine Del 6129, for the settled principle that only partners have a right to the property of the firm, and that the marks and assets belong to the firm, not to any partner individually or their heirs.. The goodwill and marks did not belong individually to a former partner or any other partner. Consequently, the death of a partner could not result in the transfer of the partnership’s trademark rights or goodwill to his heirs. The Court considered the separate claim made by defendant 1 as an heir of a former partner. In that litigation, the defendant had received the monetary entitlement determined under the relevant reconstituted partnership deed, and the judgment and decree had attained finality. The Court therefore concluded that the defendant had no surviving legal entitlement to the assets or goodwill of the plaintiff firm.
The Court drew an important distinction between a person’s status as an heir and an independent legal right in partnership property. Being a descendant or legal heir of a former partner does not automatically confer ownership over the assets or trademarks of the partnership. Defendant 1 had also never himself been a partner or employee of the plaintiff firm. Thus, he could not independently assert an entitlement to the firm’s goodwill or represent himself as being connected with it. The argument that “Fox & Mandal” was a family mark was similarly rejected. The Court held that the plaintiff firm was a separate juristic entity and that there was no material demonstrating that the mark had ever been treated as a family mark. The fact that Gokul Chandra Mandal had been one of the founders did not transform the partnership’s trade mark into family property. The presence of John Kerr Fox, who was entirely unrelated to the Mandal family, further weakened the argument that the mark belonged to the family as such.
The Court also rejected the defendants’ reliance on registration and the alleged no-objection certificate. It held that registration was not decisive in an action for passing off. Passing off protects goodwill and the proprietary interest arising from use and reputation, and the existence or status of a registration cannot defeat a valid passing-off claim where the facts establish prior user and deceptive conduct. On delay and acquiescence, the Court distinguished mere silence or inaction from positive conduct amounting to acquiescence. Acquiescence requires a sufficiently clear act or conduct indicating consent to the defendant’s use. The Court held that delay alone did not deprive the plaintiffs of relief. In the circumstances of the case, particularly following the reconstitution of the firm and the resolution of the monetary claims of the former partner’s heir, the defendants could not rely on delay to justify continued exploitation of the plaintiff’s goodwill. The Court also addressed the defendants’ argument that other members of the Mandal family were using the name. It held that such third-party use was not a defence available to the defendants. The plaintiffs, as dominus litis, were entitled to decide whom to sue. The existence of other users did not confer a legal right upon the defendants to engage in conduct that amounted to passing off.
The Court found that the defendants were attempting to create an impression of a continuing connection with the historic firm. The use of the plaintiff’s historical legacy, including references to 1896 and representations concerning being an original or oldest full-service law firm, was considered significant. The Court also referred to the use of an old clock displayed on the defendants’ website, which had been associated with the plaintiff firm since 1896. The Court considered these representations particularly serious because the defendants had knowledge of the subsisting restraint orders. Their continued conduct, despite those orders, demonstrated what the Court regarded as a deliberate and calculated attempt to create confusion and misrepresentation. The common field of activity was also significant because both sides operated in the legal services sector, increasing the likelihood that members of the public could believe that the defendants were connected with the plaintiff firm.
The Court then considered the applicable standard for summary judgment under Order XIII-A, Civil Procedure Code, 1908 (CPC). It explained that summary judgment is appropriate where the defendant has no real prospect of successfully defending the claim and there is no other compelling reason requiring the matter to proceed to a full trial. The Court stressed that the procedure must be used carefully and should not replace a regular trial whenever factual disputes genuinely require oral evidence. However, the Court distinguished between genuine triable issues and fanciful or illusory defences. The absence of a written statement was not treated as automatically entitling the plaintiffs to a decree. Nevertheless, it was considered a vital factor when determining whether there was any real prospect of a successful defence. The Court held that a defendant who had lost the opportunity to file a written statement could not use summary proceedings as a means of obtaining a second opportunity to raise speculative defences. After examining the authorities relied upon by both parties, the Court found that the defendants had failed to demonstrate any real defence. The cases relied upon by them involved materially different factual circumstances, such as existing contractual relationships, genuine evidentiary disputes, or other circumstances requiring a full trial. Those features were absent from the present dispute. The Court concluded that all three essential elements of passing off had been established as laid down in Mallcom (India) Ltd. v. Rakesh Kumar, 2019 SCC OnLine Del 7646:
1. reputation of the goods or services,
2. possibility of deception and misrepresentation, and
3. likelihood of damages to the plaintiffs are satisfied.
The Court ultimately held that the defendants had no legal standing or right to claim association with the plaintiff firm. Their attempt to rely upon family lineage, former partnership connections and alleged shared goodwill could not overcome the separate legal personality of the partnership and the proprietary character of its goodwill and marks. Accordingly, the Court allowed the plaint and granted a decree of perpetual injunction. The Defendants 1 and 2, their men, servants, agents, assigns and other partners were restrained from holding themselves out as being associated with the Plaintiff 1 or Plaintiff 2, claiming the plaintiff 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”. After pronouncement of judgment, the defendants sought a stay of the operation of the decree, but the Court rejected that request.
[Fox and Mandal v. Somabrata Mandal, 2026 SCC OnLine Cal 12350, decided on 24-8-2026]
*Judgment authored by: Justice Ravi Krishan Kapur
Advocates who appeared in this case:
For the Plaintiff: S.N Mookherjee, Senior Advocate, Soumya Roy Chowdhury, Paritosh Sinha, Deepti Priya, S. Khanun, Advocates
For the Defendant: Dhiraj Kumar Trivedi, Senior Advocate, Indranil Munshi, Advocate
