A Delhi court recently restrained Bengaluru-based law firm Fox Mandal & Associates from using the trademark ‘FoxMandal’ in any form [Somabrata Mandal & Anr v. Shuvabrata Mandal & Ors.pdf]. .District Judge (Commercial Court) Vidya Prakash of the Patiala House Courts also barred the firm from using the domain name www.foxmandal.in because it appeared similar to FoxMandal’s website (www.foxmandal.com). The Court held that a prima facie infringement and passing off case is made out against the defendants. “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,” the Court held. .FoxMandal and its Managing Partner Somabrata Mandal moved the Court alleging infringement of its trademark by Fox Mandal & Associates and its proprietors. It was stated that the defendants, Shuvabrata Mandal and Shouryabrata Mandal, are brothers of Somabrata Mandal and had earlier been a part of FoxMandal, but later split into a separate entity while continuing to use the brand name. The Court was told that from 1996 to 2018, the defendants did not take any steps to register the trademark in question, but have done so recently and also started using a domain name which may confuse the public. Further, it was stated that the defendants are taking all these steps to benefit from the already established goodwill and reputation of the plaintiff..After considering the case, the Court said that the two marks are phonetically and deceptively similar. “…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,” the Court said. The Court noted that the plaintiff FoxMandal has been using the mark prior to the defendants Fox Mandal & Associates. “Therefore, it is clearly seen that the defendants have adopted the impugned trade mark I logo FoxMandal/ FoxMandal, which are identical and/ or deceptively, confusingly, phonetically and visually similar to the plaintiffs.”.Senior Advocate Pramod Kumar Dubey represented the plaintiff FoxMandal. .[Read Order]
