Delhi High Court sets aside order restraining Fox Mandal & Associates from using FoxMandal trademark

The Delhi High Court on Wednesday set aside the order restraining Bengaluru-based law firm Fox Mandal & Associates from using the trademark ‘FoxMandal’ in any form..The order was passed after obtaining consent from both parties. A Bench of Justices Hari Shankar and Ajay Digpaul urged the parties to file responses before the commercial court by June 5. The commercial court is now expected to hear the case on June 6. .In the second week of May, a commercial court in New Delhi restrained Shuvabrata and Shouryabrata Mandal and their firm Fox Mandal & Associates from using the "FoxMandal" trademark and the domain www.foxmandal.in. This, after Somabrata Mandal and his firm Fox Mandal & Co claimed ownership of the "FOXMANDAL" trademark registered since 2002. It was asserted that the firm was originally established by their late father Dinabandhu Mandal in 1984, with Somabrata becoming Managing Partner in 1989 and designing the logo himself.The defendants, who are the brothers of the plaintiff, have been providing legal services under the name Fox Mandal & Associates from Bangalore since 1996 and Delhi since 2022. According to the plaintiffs, the defendants registered the domain www.foxmandal.in in 2010 without the plaintiffs' knowledge but only began using it in 2018. The plaintiffs further alleged that after they objected to the defendants' 2020 applications for registering various "FoxMandal" marks, the defendants began using "FoxMandal" instead of "Fox Mandal & Associates" on their website..The Patiala House Court had found that the plaintiffs established prima facie registration of the "FOXMANDAL" mark since 2002. It concluded that the defendants' mark is "phonetically identical and/or deceptively similar", creating potential confusion for clients. It thus ruled that a prima facie case of trademark infringement and passing off existed, with the balance of convenience favouring the plaintiffs.It restrained the defendants from using the "FoxMandal" trademark/logo in any form similar to the plaintiffs' trademark and from using the domain www.foxmandal.in or any similar domain. This ex parte order (granted without hearing the defendants) was then appealed before the High Court..Why drag courts into disputes between law firms? Delhi High Court in Fox Mandal case.Senior Advocates Amarjit Singh Chandhiok and Pramod Kumar Dubey appeared for Somabrata Mandal along with Advocate Mamta Tiwari..Senior Advocates Sandeep Sethi and Jayant Mehta appeared for Shuvabrata and Shouryabrata Mandal of Fox Mandal & Associates