Why drag courts into disputes between law firms? Delhi High Court in Fox Mandal case

In a candid exchange during a trademark dispute hearing, the Delhi High Court questioned the need for the involvement of courts in internal conflicts between prominent law firms..“Why are courts being dragged into disputes between law firms? We are the last persons who would like to be drawn into this unsavoury litigation,” Justice C Hari Shankar remarked while hearing an appeal in the Fox Mandal trademark dispute.."You are both reputed law firms—Fox Mandal is a popular name. Why don't you sit and sort this out over a glass of Chardonnay? I don't know what it is, but I am told it is the best!” Justice Shankar added, drawing laughter in the courtroom. He also made a pointed reference to the earlier split between Luthra and Saraf, which had similarly ended up before the Court..A Bench of Justices Shankar and Ajay Digpaul then proceeded to adjourn the case till May 21 and urged the parties to work out a settlement. .Last week, 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 plaintiff's 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 court 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) is now subject to appeal before the High Court..During the hearing, Senior Advocate Sandeep Sethi, appearing for Shuvabrata and Shouryabrata Mandal and Fox Mandal & Associates, argued that the interim injunction was issued nearly three months after the suit was filed, without any prior notice to the defendants. He submitted that the ex parte order had effectively paralysed the operations of the firm.Senior Advocates Amarjit Singh Chandhiok and Pramod Kumar Dubey appearing for Somabrata Mandal, argued that the use of a common logo and domain name had led to client confusion, with both sides receiving emails intended for the other. He submitted that the suit became necessary after Shuvabrata and Shouryabrata Mandal established their Delhi office in 2022, intensifying the overlap and potential for misrepresentation..The case is now expected to continue on May 21. .Follow Bar and Bench channel on WhatsAppDownload the Bar and Bench Mobile app for instant access to the latest legal news.