Foxmandal's Trademark Rights Uphold: Delhi Court Issues Injunction Against Rival Firm

Foxmandal's Trademark Rights Uphold: Delhi Court Issues Injunction Against Rival Firm

Introduction

The Patiala House Courts, Delhi, presided by District Judge Vidya Prakash has restrained Bengaluru-based law firm Fox Mandal & Associates from using the trademark ‘FoxMandal’ in any form, after FoxMandal and its Managing Partner Somabrata Mandal moved the Court alleging trademark infringement.

Factual Background

FoxMandal, a law firm, alleged that Fox Mandal & Associates and its proprietors, Shuvabrata Mandal and Shouryabrata Mandal (brothers of Somabrata Mandal), infringed its trademark by using a similar name and domain. It was claimed that the defendants, Shuvabrata Mandal and Shouryabrata Mandal, are Somabrata Mandal's brothers who were previously a member of FoxMandal before splitting into a distinct organization but continuing to utilize the brand name. According to the Court, the defendants did not take any action to register the trademark in question between 1996 and 2018, but they have since done so and have also begun using a domain name that could cause confusion for the general public.

Procedural Background

The court held that, “While applying the prudent test from the standpoint of common/lay man, it is prima facie shown that the defendants are passing off their impugned services by prominently using phonetically identical and/or deceptively similar trade mark/logo "FoxMandal"/ FoxMandal, thereby giving an impression in the minds of common man that those services are coming from the house of the plaintiffs.”

Issues Involved

1. Trademark Infringement: Whether Fox Mandal & Associates' use of the ‘FoxMandal’ trademark constitutes infringement of FoxMandal's trademark.

2. Passing Off: Whether Fox Mandal & Associates' actions amount to passing off their services as those of FoxMandal.

Contentions of the Parties

Plaintiff’s Contentions: The plaintiff argued that Fox Mandal & Associates' use of the similar trademark and domain name is likely to cause confusion among consumers and benefit from FoxMandal's goodwill and reputation.

Defendant’s Contentions: No contentions were recorded as the judgment was passed at an interim stage.

Reasoning and Analysis

The Court held that the two marks are phonetically and deceptively similar, and an unwary consumer can be easily misled and deceived by the infringed trademark. Furthermore, the court stated that, “…an unwary consumer of justice can be easily misled and deceived by the said infringed trademark and can be trapped in availing the impugned service as coming from the house of the plaintiffs.”

Final Decision

The Court restrained the defendant from using the trademark ‘FoxMandal’ in any form and from using the domain name www.foxmandal.in because it appeared similar to FoxMandal’s website (www.foxmandal.com).

Law Settled

This case showcases the importance of protecting trademarks and preventing passing off. The Court's decision reinforces the principle that prior use of a trademark can be a decisive factor in determining infringement.

In this case the plaintiff was represented by Mr. Pramod Kumar Dubey, Senior Advocate.