Mumbai, Dec 26: The Bombay High Court has restrained Mumbai-based Fedex Securities Private Limited and its group companies from using the mark ‘FEDEX’, holding that such use amounts to trademark infringement, passing off and dilution of Federal Express Corporation’s well-known brand.
Suit Filed by Federal Express Corporation
Justice Riyaz Chagla passed the order on an application in a trademark infringement and passing off suit filed by Federal Express Corporation (FedEx) against Fedex Securities Pvt Ltd, Fedex Stock Broking Ltd and Fedex Finance Pvt Ltd.
Court Accepts FedEx’s Trademark Rights Claim
Delaware-incorporated FedEx contended that the defendants’ use of ‘Fedex’ in their corporate names and business activities infringed its registered trademark FEDEX in several classes, including financial services.
Accepting this contention, the court granted a wide interim injunction restraining the defendants from using ‘FEDEX’ or any deceptively similar mark as a trademark, service mark, corporate or trading name, domain name, email ID, or in advertising and business papers, pending trial.
Six-Week Stay Granted for Compliance or Appeal
However, the operation of the order has been stayed for six weeks to enable the defendants to comply with the directions and/or avail appellate remedies.
FEDEX Declared Well-Known Mark in India
FedEx relied on its Indian trademark registrations for FEDEX to assert exclusive rights under Sections 28 and 29 of the Trade Marks Act, 1999. The court also noted that in 2024, the Trade Marks Registry declared FEDEX a “well-known” mark in India, strengthening FedEx’s case even beyond its core courier and logistics business.
Defendants’ ‘Prior Use’ Defence Rejected
The defendants argued that they had adopted ‘Fedex’ in their corporate names in the mid-1990s, when service marks were not registrable under the Trade and Merchandise Marks Act, 1958. They claimed protection under Section 159(5) of the 1999 Act, contending that their long-standing use amounted to “continued use” saved from infringement actions.
Justice Chagla rejected the defence, holding that Section 159(5) is a limited savings clause protecting only a “particular use” that was lawful under the 1958 Act but later became infringing due to changes introduced in 1999.
Use in Financial Services Held Infringing
The court observed that the 1999 Act, for the first time, treated acts such as use on business papers, advertising, oral use and dilution as infringement. “Section 159(5) merely permits those specific uses to continue if they pre-dated 1999,” the court said.
In the present case, the court emphasised that FedEx secured a Class 36 registration after the 1999 Act and that FEDEX is now a recognised well-known mark. Any use of ‘Fedex’ by the defendants for financial services after that registration amounts to infringement, it held.
Risk of Public Confusion Highlighted
The court further found that FEDEX has acquired distinctiveness, trans-border reputation and has become a “household word” in India. Use of ‘Fedex’ in the defendants’ corporate names was likely to mislead the public into believing they were “a sister concern, subsidiary or agency” of FedEx.
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Strong Prima Facie Case Established
Holding that FedEx had made out a “strong prima facie case”, the court said the balance of convenience favoured the plaintiff and that “irreparable loss” would be caused if interim relief were denied.
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