“An attempt to mislead, if not deceive”- Calcutta HC in the case of Fox & Mandal v. Fox Mandal

The Calcutta High Court vide its order dated 15^th November 2022 in its case of FOX AND MANDAL AND ORS. Vs SOMABRATA MANDAL AND ORS (IA NO. GA/1/2022 in CS/269/2022), gave the view that the petitioners have been able to establish a strong prima facie case on merits and the balance of convenience was also in favor of the plaintiffs. The Court granted the order for an injunction to the petitioners restraining the respondents or representing themselves as the petitioner firm i.e., “Fox and Mandal” or representing that the respondents have any connection or relation with the services rendered by the petitioner firm.

Brief Facts

The petitioner firm is a registered partnership firm engaged in providing legal services, legal consultancy, advisory, and other allied services. The firm was incorporated in the year 1896 and has ever since been using the trade mark “Fox & Mandal” uninterruptedly and extensively. The word “Fox & Mandal” also forms the business name of the firm. The firm enjoys an unparallel reputation and has enormous goodwill in the legal fraternity. The firm is the owner of the trade mark “Fox & Mandal” which has been registered on 7 March 2006 in Class 42 with the user date of the mark recorded as ‘since 01.01.1896’.

ecord No. : 1 | Application Number : 1428861

Somabrata, the respondent, is the descendant of the late Fox & Mandal partner Dinabandhu Mandal. The conflict started after Dinabandhu passed away on June 30 of this year. It was asserted that Somabrata was giving the impression in public that he was affiliated with the petitioner firm. The then members of Fox & Mandal, created the respondent firm, Fox Mandal in 1984. Somabrata’s claims that he was affiliated with Fox & Mandal and that his firm, Fox Mandal, is among the biggest and oldest law companies in the nation drew criticism. He was alleged to have been just utilising its goodwill for his own gain. The petitioner firm has filed the present suit for infringement of trade mark and passing off against the respondent.

Conflict

The main point of conflict is that the petitioners say that the respondents have been misrepresenting themselves as having been “established in the year 1896” and as such, claiming to be one of India’s oldest and largest law firms and continuing to work with the petitioner firm.

Contentions of the parties

It is contended by the petitioner that any claim made by the respondents that they were incorporated in 1896 or that they have been associated with the Petitioner firm since that year is presumptively false, deceptive, and mala fide. This is a blatant attempt to gain out of the petitioner firm’s goodwill and reputation.

The petitioners relied on Clause 17 of the reconstituted partnership deed dated 27th October 2014. On an interpretation of Clause 17, it is contended that the respondent can only be entitled to a monetary claim in respect of the goodwill of the petitioner firm.

It is argued by the respondents that they have been asserting these rights ever since the respondent firm was established, and the petitioners have made no protests at all. Furthermore, it is claimed that Dinabandhu Mandal and his family had complete control over the family business Fox & Mondal. Therefore, any limitations on the usage of the respondents’ business, which has been operating since 1896, are unwarranted and unjustified.

Court’s notes and decision

The Court noted that conflicts between Dinabandhu and his youngest son, a partner at Fox & Mandal, were peacefully settled and the company was restructured in March of this year. A suit C.S. No.178 of 2022 (Fox & Mandal & Co. & Anr. Vs. Somabrata Mandal & Ors.) is also pending before the court over the late Dinabandhu’s ownership stake in the partnership company.

While relying on the Section 55 of the Indian Partnership Act, 1932 and Clause 17 of the reconstituted Partnership Deed dated 27 October, 2014, the court made a prima facie case and said that the respondent is only entitled to 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 services being provided by the petitioner firm. Justice Ravi Krishan Kapur, while granting a temporary injunction in favor of 125 years old Fox & Mandal observed that:

“At this stage, I find that there is a direct attempt by the respondent no.1 to mislead, if not deceive. The acts complained of suggest that there exists a connection between the petitioner no.1 and the respondent nos. 1 and 2. Misrepresentation lies in the heart of a passing off action. In describing that the respondent nos. 1 or 2 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 the respondent nos. 1 and 2 to trade on the goodwill and reputation of the petitioner no. 1.”

The bench acknowledged that when a partner dies, the firm’s reputation cannot be disregarded. However, in light of Clause 17 of the partnership agreement, respondent no. 1’s entitlement is only a financial one. 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

When deciding whether someone is relying on someone else’s reputation or goodwill in order to make money, the current case offers further insight. The Court’s comment that there was an attempt to mislead in the present case, leads us to realize that the phrases “misleading” and “deceptive” have different meanings. Whether or not one intended to make the mistake makes a significant difference. One can accidentally mislead someone, but one cannot accidentally deceive someone. While both types of conduct are forbidden, in both cases one must still deal with the repercussions in both instances and are barred from profiting unfairly from another person’s reputation.