In a landmark ruling on trademark rights of partnership firms, the Calcutta High Court held that goodwill belongs exclusively to the firm and not to individual partners or their heirs, while rejecting the defendants’ “family mark” defence and finding no triable issues warranting a full trial. Accordingly, the Court restrained the defendants, their servants, agents, and other partners from claiming any legacy in the year of establishment of Fox and Mandal (plaintiff no. 1), i.e., 1896, or passing off their firm or legal services as that of the plaintiffs. The Court also restrained the defendants from using the marks “Fox & Mandal”, “Fox and Mandal” and “F&M”.
The High Court held that the “classic trinity” of reputation, misrepresentation, and damage to goodwill are the basic ingredients to succeed in an action for passing off, and misrepresentation lies at the heart of such an action. A prior user has a superior right and is entitled to protection against any subsequent user of an identical or deceptively similar mark.
The Court also emphasised that goodwill of a partnership is a partnership asset, and only partners have a right to the property of the firm subject to contract; no third party can claim a right in the assets and properties of the firm. Registration is inconsequential in an action for passing off, and the plaintiff can succeed even upon showing likelihood of injury or damage, without proving actual damages.
A Single Judge Bench of Justice Ravi Krishan Kapur observed that the plaintiff no. 1 is the admitted prior user of the marks “Fox and Mandal”, “Fox & Mandal” and “F&M” since 1896, while the defendants are subsequent adopters claiming user only since 1986. The reputation and goodwill of the firm remained undisputed. The Court noted that goodwill generated by a partnership is a partnership asset and belongs to the firm, not to individual partners or their heirs. The mark “Fox & Mandal” is the property of the firm and cannot be claimed by any individual partner or his legal heirs.
The Court further observed that the defendant no. 1’s claim as one of the heirs of Late Dinabandhu Mandal had already been settled in C.S. No. 408 of 2024, where he received his full monetary claim under the reconstituted partnership deed dated 27 October 2024, and the decree had attained finality. The Court rejected the contention that the mark is a “family mark”, noting that Mr. John Kerr Fox, one of the founding partners, was a total stranger to the Mandal family. The Court also rejected the defences of delay and acquiescence, holding that acquiescence requires positive acts and cannot be inferred from mere silence.
The Court found that all the ingredients of passing off, namely reputation, misrepresentation, and likelihood of damage, were satisfied, and the defendants had failed to raise any triable issue.
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Briefly, the plaintiffs, Fox and Mandal, are a partnership firm constituted in 1896, originally between Mr. John Kerr Fox, an English attorney, and Mr. Gokul Chandra Mandal, an Indian attorney, providing legal services. The firm has been continuously using the mark “Fox & Mandal” since 1896 and obtained trademark registration in Class 42 in March 2006. The plaintiffs also set up a limited liability partnership as plaintiff no. 2.
The defendant no. 1, Somabrata Mandal, was never a partner or employee of the firm, while defendant no. 2 is a separate partnership firm constituted in 1984 by some of the then partners of the plaintiff firm. The plaintiffs alleged that the defendants were misrepresenting themselves as being connected to or associated with the firm through various publications, advertisements, and online materials. Despite service of summons, the defendants failed to file any Written Statement.
