Calcutta High Court
Fox And Mandal And Anr vs Somabrata Mandal And Ors on 22 September, 2025
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
IN THE HIGH COURT AT CALCUTTA
ORIGINAL SIDE
Ordinary Original Civil Jurisdiction
BEFORE:
The Hon'ble Justice Ravi Krishan Kapur
IA NO. GA/5/2023
[OLD NO CS/269/2022]
In IP-COM/6/2025
FOX AND MANDAL AND ANR.
Vs
SOMABRATA MANDAL AND ORS
For the petitioners : Mr. Soumya Ray Chowdhury, Advocate
Mr. Debayan Sen, Advocate
For the respondents : Mr. Krishnaraj Thaker, Senior Advocate
Mr. Indranil Munshi, Advocate
Ms. A. Sarkhel, Advocate
Ms. Ahona G. Majumder, Advocate
Hearing on : 22.09.2025
Judgment on : 22.09.2025
Ravi Krishan Kapur, J.:
1. This is an application seeking consolidation and analogous hearing of
the instant suit alongwith a writ petition WPO-IPD 1 of 2025
(Somabrata Mandal vs. Registrar of Trade Marks & Ors.) and another
Commercial Suit IP COM 31 of 2025 (Somabrata Mandal vs. Arun
Kumar Mandal & Ors.). It is contended on behalf of the petitioner that
the above proceedings are pending before the Intellectual Property
Rights Division of this Court and the same be consolidated and heard
analogously.
2. For convenience, a summary of the reliefs sought for in the above
three proceedings is set out below:
WPO-IPD 1 of 2025 (Old Case No. CS 269 of 2022 CS 86 of 2023
WPO 2705 of 2022 (Somabrata (Fox & Mandal & Ors Versus (Somabrata Mandal Versus Arun
Mandal Versus The Registrar of Somabrata Mandal & Ors) Kumar Mandal & Ors)
Trade Marks & Ors) Filed on:- 31st October, 2022 Filed on:- 10th May, 2023
Filed on:- 23rd September, 2022
a) A writ of and/or Writs in The plaintiffs therefore pray for leave The plaintiffs therefore pray for
the nature of CERTIORARI, order under Clause 12 of the Letters Patent under Clause 12 of the Letters
or direction quashing and setting for the High Court of Judicature at Fort Patent for the High Court of
aside the impugned communication William in Bengal, 1865, Order II Rule Judicature at Fort William in
dated 27.04.2022 passed by the 2 of the Code of Civil Procedure, 1908 Bengal, 1865, Order II Rule 2 of the
respondent No. 1 and all and also under Section 12A of the Code of Civil Procedure, 1908 and
action/direction acted upon in Commercial Courts Act, 2015 and also under Section 12A of the
pursuance thereto, and further a claims - Commercial Courts Act, 2015 and
direction on the respondent No. 1 to a) Declaration that the defendant claims -
remove/rectify/expunge the Nos. 1 and 2, their men, agents,
impugned registration under No. servants and assigns and any other the a) A decree of permanent
1428861 from the Register of Trade partner of the defendant No.2 have no injunction restraining the
Marks; right and/or authority to use the defendants, their men, agents,
b) A writ of and/or Writs in plaintiff No. 1's trademark 'Fox & servants and assigns and any other
the nature of CERTIORARI, order Mandal' or the marks 'Fox Mandal', partner from passing off their
or direction quashing and setting 'Fox Mandal and Co'., 'FM' or any services rendered under their
aside the impugned communication other similar trademarks in any registered marks as that of the
dated 26.04.2022 and 27.04.2022 manner whatsoever including but not plaintiff's registered trademarks
passed by the respondent No. 1 and limited to as part of their firm name, namely, Fox Mandal, "Fox &
all action/direction acted upon in domain name or e-mail address; Mandal" and "FM";
pursuance thereto in relation to the Perpetual injunction restraining the
impugned trade mark application defendant Nos. 1 & 2 and their men, b) A decree of permanent
Nos. 4089465 and 4089423; agents, servants and assigns and other injunction restraining the
c) A writ of and/or Writs in partners, if any, of the defendant No.2 defendants, their men, agents,
the nature of MANDAMUS from passing off their firm and/or servants and assigns and any other
directing the respondent No. 1 legal services as that of the plaintiff partner from passing off their
authority to forthwith transmit all Nos. 1 and 2 by using the said plaintiff services rendered under their
records pertaining to the present No. 1's trademark 'Fox & Mandal' or registered marks as that of the
case before this Hon'ble Court, so the marks 'Fox Mandal', 'Fox Mandal Plaintiff's by using the trademarks
that conscionable justice may be and Co'., 'FM' and/or any other "Fox Mandal", "Fox and Mandal",
done; similar marks in any form whatsoever and "F&M" or any other mark
d) A stay on the including as part of their firm name, being deceptively similar to the
implementation and execution of domain names and email addresses; registered mark of plaintiff.
the impugned communication b) Delivery up and cancellation of all c) A decree of declaration
dated 26.04.2022 and 27.04.2022 records, stationery and other material, that the goodwill and legacy
passed by the respondent No. 1 and both physical and electronic of the associated with the registered
thereby carrying out the aforesaid defendant Nos. 1 and 2 and their men, mark, "Fox & Mandal" is a shared
change in the trade mark register, agents, servants and assigns and any goodwill of the Mandal family
and thereby restrain the private other partner of the defendant No.2 which includes the plaintiff;
respondents from acting and where the trademarks 'Fox & d) Ex parte ad interim orders
implementing their rights as Mandal', 'Fox Mandal', 'Fox Mandal in terms of prayers (a), (b) and (c)
registered proprietor of the and Co'., 'FM' or any other similar above;
impugned trade marks, pending the trademarks feature; e) Decree of Rs. Twenty
admission, hearing and final c) Mandatory injunction directing the Crore towards damages on
disposal of this application; defendant Nos. 1 and 2 and their men, account of passing off of the
e) An ad-interim order be agents, servants and assigns and other marks referred to in (a) and (b)
passed restraining the private partners of the defendant No.2 to above,
respondents from making any immediately make over and destroy all f) Receiver taking a delivery
further trade mark applications for material records etc. featuring the of infringing/impugned material
registration of any trade mark trademarks 'Fox & Mandal' 'Fox including letter heads, brochures,
comprising of "Fox Mandal" Mandal', 'Fox Mandal and Co'., 'FM' journals, magazines etc,
without the consent of the and/or any other similar trademark; destruction thereof;
petitioner; d) Perpetual injunction restraining the g) Costs;
f) Rule NISI in terms of defendant Nos. 1 and 2 and their men, h) Such other reliefs as this
prayers (a), (b) and (c) made herein agents, servants and assigns and/or Hon'ble Court may deem fit and
above; any other partners of the defendant proper in the facts and
g) Ad-interim order in terms No.2 holding themselves out as part of circumstances of the case.
of prayers (a), (b) and (c) made or connected with the plaintiff No. 1
herein above; as also the plaintiff No. 2;
h) Pass such other and further e) Decree for Rs.100 crores as
order or orders and/or direction(s) pleaded in paragraph 68 above and in
as Your Lordships would deem fit the alternative, an enquiry into
and proper in the interest of justice. damages and decree for such sum as
may be found due and payable;
f) Interim interest @ 18% per annum;
g) Receiver;
h) Injunction;
i) Costs;
j) Such other relief or reliefs.
3. The parties inter-alia claim rival rights primarily in respect of the
mark 'Fox & Mandal' which belongs to the partnership firm. It is
contended on behalf of the petitioner that there are common issues of
facts and law which arise in all these three proceedings which include
but are not limited to (a) goodwill in the subject marks; (b) whether
there is any possibility of confusion being created by concurrent user
of the subject marks; (c) whether any of the parties can claim
exclusive ownership of any trademark to the exclusion of the other;
and (d) whether any of the parties can restrain the other from using
the subject marks or any of them. As such, consolidation of these
proceedings would ensure overlapping and conflicting decisions and
are necessary to ensure effective determination of the disputes. In
support of such contentions the petitioner relies on the decisions in
Prem Lala Nahata & Ors. vs. Chandi Prasad Sikaria (2007) 2 SCC 551
and Chittivalasa Jute Mills vs. Jaypee Rewa Cement (2004) 3 SCC 85.
4. On behalf of the plaintiffs/respondents it is contended that this
application is an abuse of process of Court and has been filed with the
ulterior intent of procrastinating matters. This is a suit for passing off.
The defendants have chosen not to file their Written Statement within
the prescribed mandatory time period of 120 days and are indirectly
trying to thwart progress of this suit. The applicant has filed this
application as an afterthought only to stall the hearing of the
application under Order XIII A for summary judgment filed in this
suit. The prayer for consolidation has also been repeatedly raised at
different stages and has been rejected. In addition, the stage of all the
three proceedings is of extreme importance before any prayer for
consolidation can be considered. In support of such contentions the
plaintiffs rely on the decisions in Monohar Lal vs. Ugrasen (2010) 11
SCC 557, Ananda Swarup Agarwal & Anr. vs. State of West Bengal &
Ors. AIR 2000 Cal 222, Jai Singh vs. Union of India & Ors. (1977) 1
SCC 1, Dyna Chem vs. Jaipal Das Punjabi 2021 (4) MPLJ 406, Dyna
Chem vs. Jaipal Das Punjabi (Special Leave to Appeal (c)
No.11911/2021 order dated 09-08-2021, Supriya Roy & Anr. vs. Bijaya
Bose 2018 (s) CHN 372, Sri Sribrata Deb vs. Bank of India & Ors.
(W.P.No.26817(w) of 2016 order dated 16th June, 2017).
5. The Code of Civil Procedure, 1908 (as amended by virtue of the
Commercial Courts Act, 2015) permits consolidation of proceedings as
part of Case Management Hearing (Order IV A). Such powers may also
be exercised under Section 151 of the Code of Civil Procedure, 1908
and also in terms of the Rule 18(b) of Intellectual Property Right
Rules, 2023 of High Court at Calcutta.
6. Ordinarily, the power to direct consolidation may be exercised by the
Court of its own initiative or on an application being made to it. In
order to direct consolidation, it is necessary not only to ascertain the
subject matter of the proceedings proposed to be consolidated, but the
stage at which the proceedings are. In this suit (IP-COM 6 of 2025),
the Writ of Summons has been duly served. The time to file the
Written Statement has also expired. No Written Statement has been
filed by any of the defendants. The interlocutory application being
GA/1/2024 seeking interim reliefs has been disposed of by this Court.
The plaintiffs have now filed an application under Order XIIIA for
summary judgment and the matter has been heard on diverse dates.
The plaintiff has concluded its opening arguments and the defendant
no.1 is still being heard.
7. As far as the writ petition is concerned, there is no question of any
trial being conducted. The writ petition was filed as far back as on 23
September 2022. Affidavits have been completed and the matter was
at an advanced stage of hearing when the same was adjourned by a
Co-ordinate Bench. The suit being CS/86/2023 now re-numbered IP-
COM 31 of 2025, (Somabrata Mandal versus Arun Kumar Mandal) filed
by the petitioner has made little progress. The Writ of Summons has
not been lodged despite a period of more than two years having
lapsed. An application for amendment of the plaint was dismissed on
merits on 3 April 2024. Thereafter, an application under Order 7 Rule
11 of the Code of Civil Procedure 1908 has been filed and is still
pending final disposal. The plaintiff in the above suit has also filed an
application being GA/5/2025 praying for extension of time to lodge
the Writ of Summons as recent as on 18th July 2025. Directions for
affidavits have been ordered and the same is pending final disposal.
Thus, other than the subject matter of three proceedings being
different, the stages of the respective suits are also incomparable.
8. In this background, the filing of the instant application for
consolidation is ex-facie to delay and procrastinate the hearing of the
application under Order XIIIA filed in this suit. There is no question of
trial of the writ petition. The indisputable facts would reveal that the
respondent no.1 has been indolent in proceeding with his suit and no
Writ of Summons has also been served till date. It is true that the
questions raised in all the three proceedings may fall within the broad
umbrella of intellectual property rights of the plaintiff's firm name 'Fox
& Mandal', nevertheless, the question of passing off raised in this suit
can be decided regardless of the question raised in those proceedings.
One of the objects behind the enactment of the Commercial Courts
Act, 2015 is for speedy disposal of commercial disputes. This cannot
be jettisoned and defeated by recalcitrant litigants in an indirect and
circuitous manner.
9. As a general rule, when claims by or against different parties involve
common questions of fact bearing sufficient importance in proportion
to the rest of the action it is desirable that all these matters be
disposed of at the same time, the Court may then allow consolidation
and further pass directions as to how the action should be tried. The
power to make an order for consolidation is purely discretionary and
the Court has to consider whether it is desirable in the facts and
circumstances of the case that common questions of law and fact
arise for consideration or the right to reliefs claimed in several cases
or matters be disposed of at the same time. In passing an order for
consolidation, the Court has a wide discretion to allow joinder as to
common questions of fact. The fact that those causes of action which
arise may raise direct or indirect issues is not the solitary ground for
allowing consolidation. The timing of the instant application is also
essential. Though the suit being IP-COM 31 of 2025 (Old Suit 86 of
2023) was filed two years ago, the instant application has been filed
after a lapse of two years. [Payne vs. British Time Recorder Co. Ltd.
And WW Curtis Ltd. (1921) 2 KB 1; Harwood vs. Statesman Publishing
Co. Ltd. (1929) 98 LJKB 450].
10. It is impossible to lay down any inflexible Rule as to how the
discretion of Court ought to be exercised. The only purpose in
directing consolidation is that there must be a strong common link
either in the form of cause of action or the injury or the relief claim
which warrants consolidation of proceedings. Then, there is an
additional question of costs and time which could be saved. Even if a
party is entitled as a matter of law yet as a matter of discretion,
consolidation may be disallowed if there is incompatibility with the
success or if it embarrasses or delays the trial of the action.
11. The stage of the suit is also extremely important for consolidation of
the suit. The suit filed by the petitioner is stillborn since no Writ of
Summons has even been lodged. A diligent party cannot be punished
for the acts of an indolent opponent. (Dyna Chem vs. Jaipal Das
Punjabi (2021) 4 MPLJ 406 and Supriya Roy and Anr. vs. Bijaya Bose
2018 (2) CHN 372). Similarly, the issues raised in the writ petition
have no material bearing to the issues raised in this suit. In any
event, the main question in the suit, i.e., passing off can be decided
regardless of any decision raised in the two proceedings of which
consolidation is sought. Moreover, though oral submissions have been
made for transfer of IP-COM 6 of 2025, there is no prayer to this effect
in the application. [Manohar Lal vs. Ugrasen, (2010) 11 SCC 557 @
Para 34]
12. The point of the applicant having raised similar questions of
consolidation in prior proceedings though admitted is irrelevant in
adjudicating the merits raised in this application. This is not a ground
on which the application is liable to be dismissed. The different
proceedings which the parties are contesting suggest that the
applicant is trying to jettison the progress of this suit on frivolous
pretexts.
13. The decisions cited on behalf of the petitioner are inapplicable and
distinguishable. In Chitivalasa Jute Mills vs Jaypee Rewa Cement
(2004) 3 SCC 85, the Court was dealing with section 25 of the Code of
Civil Procedure, 1908, which confers powers on the Supreme Court to
transfer cases. In this case, two different suits were filed in two
different States pertaining to the very same subject matter i.e.,
transaction of supply of jute bags when transfer was sought for.
Similarly, the decision cited in Prem Lala Nahata & Anr vs Chandi
Prasad Sikaria (2007) 2 SCC 551 pertains to consolidation of trials.
The facts of this case are inapposite inasmuch as consolidation had
been refused by the High Court. The decision in Nagaland vs. Lipok Ao
(2005) 3 SCC 752 was a case dealing with section 5 of the Limitation
Act, 1963, where delay was condoned on the ground that government
officers and servants could not be treated in the same manner as an
individual private litigant.
14. In such view of the matter, there is no merit in this application. The
prayer for consolidation is ill-motivated, misconceived and stands
rejected. GA/5/2025 is dismissed. However, there shall be no order as
to costs.
(Ravi Krishan Kapur, J.)
