Just after India’s oldest law firm Fox Mandal split earlier this year, Mr. Som Mandal, Managing Partner of Fox Mandal (FM) has challenged by way of a writ petition before the Calcutta high court the action of the Trademark Registry allowing Mr. Debanjan Mandal, the partner of the Fox & Mandal for getting the brand name Fox & Mandal registered in the name of himself and the other partners Mr. Arun Mandal and Mr. Ashok Dhar, while fraudulently dropping the name of partner late Mr. Dinabandhu Mandal without seeking the permission of Mr. Som Mandal, who is the legal heir of Mr. Dinabandhu Mandal.
Som Mandal, Partner, Fox Mandal
This is to be noted that Fox & Mandal has been the name of the firm’s office in Kolkata only until the split. Actually, the renowned lawyer and the father of Mr. Som Mandal, late Dinabandhu Mandal was the senior partner of Fox & Mandal and one of the Co-owner of the Brand Fox & Mandal. Som Mandal had registered the name “FoxMandal” and the logo “FM” which was designed by him and he made the firm well known not only in India but around the world mainly through his efforts. Late Dinabandu Mandal and four other partners of Kolkata office applied in 2006 for the registration of the Mark “Fox & Mandal”, however the same was not allowed by the Trademark Registry as there existed the Mark ‘FoxMandal’ owned by Som Mandal earlier. The Trade Mark registry asked Late Dinabandhu Mandal and other applicants to get ‘No Objection’ from Som Mandal. Since the application for Fox & Mandal was moved by Late Dinabandhu Mandal, Som Mandal as his son issued ‘No Objection’. More so because the family understanding was ‘Fox & Mandal’ will only operate in Kolkata. The Trade Mark registry while registering the Mark “Fox & Mandal” endorsed it as an Associate Mark of “Fox Mandal” owned by Som Mandal.
Again in 2019 “Fox & Mandal” through late Dinabandhu Mandal applied for registration in slightly different font and also addition of the words “Solicitors & Advocate” and the same was in turn registered but endorsed with the word “Associated” with the earlier “Fox & Mandal” Mark.
Fox Mandal as a brand is registered with Som Mandal way back in 2002. Som Mandal is renowned for his legal acumen and wide affiliations with legal bodies across the globe. His is a name immediately recognised amongst top lawyers around the world and is a synonym with the firm FoxMandal.
Mr. Dinabandhu Mandal passed away 2 years back and Debanjan and other partners of Fox & Mandal was running the firm Fox & Mandal in Kolkata without making any changes in the Trade Mark Registry. Suddenly around April 2022, Debanjan Mandal made a deal with other partners of “Fox Mandal” and without informing Som Mandal filed for changing the ownership of the Trade Mark “Fox & Mandal” only in the name of Debanjan Mandal, Arun Kumar Mandal and Ashoke Kumar Dhar without taking any consent of Som Mandal who is not only one of the legal heir of Late Dinabandhu Mandal but also the main owner of the mark “Fox Mandal” which is the Mark “Fox & Mandal” is associated as per Trademark Registry.
Mr. Som Mandal, Managing Partner of Fox Mandal said, “My father late Mr. Dinabandhu Mandal was one among the five owners of the name Fox & Mandal and so legally speaking they can’t drop his name without my permission, but they did it in collusion with trademark authority and they did it very fast.”
There is a procedure for change in ownership of trademark as per Trade Mark Act and Rules there under, according to which there is a requirement to give 30 days Notice for objections and also for the new owner to get no objections from the legal heirs of the deceased owner. The petition of Som Mandal contended that the Trade Mark Registry did not follow that procedure and transferred the ownership fraudently to Debanjan Mandal and two others in 6 days. Som Mandal has also alleged in his Writ Petition that the Trade Mark Registry did all this very fraudulently, hands in gloves with the applicants and removed his father’s name and allowed Debanjan and other two applicant to usurpe the ownership of Fox & Mandal only to themselves.
A legal luminary late Mr. Dinabandhu Mandal is known for handling important cases including acting for Jit Paul at the time of Emergency and then the famous Sanchita Case and NYK zip case among others. In his extensive legal career, he handled several cases for Indian Oil Corporation, Coal India, and other public sector undertakings, besides Bank of Tokyo, Okura, Nisho Iwai.
A disappointed Som Mandal said, “The main question is that if Debanjan Mandal can do this with his own family, how can his clients trust him looking at that he is representing Lodha, Govt of West Bengal and so many other important clients.”