Disclaimer: This has been reported after the availability of the order of the Court and not on media reports so as to give an accurate report to our readers.
Bombay High Court: In an interim application seeking injunction restraining the defendants from using the mark ‘FEDEX’ or any deceptively similar mark as part of their corporate names, trade names, domain names or in any other manner whatsoever, a Single-Judge bench of R.I. Chagla, J., allowed the interim application and granted temporary injunction in favour of the plaintiff.
Factual Matrix
The Plaintiff-Federal Express Corporation, is a corporation incorporated under the laws of the State of Delaware, USA, and is globally recognised as a leader in transportation, logistics, e-commerce and business services under its well-known and distinctive trademark “FEDEX”. The plaintiff commenced operations in 1973 under the name Federal Express and subsequently coined and adopted FEDEX as its primary and exclusive brand identity worldwide.
The plaintiff has secured registrations for the trademark FEDEX in multiple jurisdictions across the world and in India since 1986. Over time, the Plaintiff expanded its presence in India, acquired Prakash Air Freight Pvt. Ltd. (PAFEX), and rebranded it as FedEx Express Services (India) Pvt. Ltd. The plaintiff’s trademark FEDEX was declared a well-known trademark by the Trade Marks Registry in February 2024.
Defendant 1 was originally incorporated in Karnataka in January 1995 under a different name and changed its corporate name to Fedex Securities Private Limited in March 1996. Defendant 2 and 3 were similarly incorporated under names that later adopted FEDEX as a prominent part of their corporate identity. All Defendants operate in the field of financial services, including stock broking and non-banking financial activities.
In October 2011, the plaintiff discovered that defendant 1 had registered and was operating the domain name www.fedexindia.in, prominently incorporating the Plaintiff’s registered trademark. Despite legal notices, the defendants continued to use FEDEX as part of their corporate names, compelling the plaintiff to initiate proceedings for infringement, passing off, and dilution.
Moot Points
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Whether the Defendants’ use of FEDEX as part of their corporate names amounts to trademark infringement and passing off?
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Whether the Defendants are entitled to protection under Section 159(5) of the Trade Marks Act, 1999 (Trade Marks Act)?
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Whether the Plaintiff has established a prima facie case, balance of convenience, and irreparable injury warranting interim relief?
Court’s Analysis
The Court noted that the principal defence raised by the defendants to resist interim relief was founded on Section 159(5) of the Trade Marks Act, contending that the suit itself was barred in law.
The Court observed that Section 159(5) is a saving clause, forming part of the repeal and savings provisions under the Trade Marks Act. It saves only the continued use of a particular use of a trademark which was not an infringement under the Trade and Merchandise Marks Act, 1958. The provision does not confer any independent or vested right to continue using a mark in perpetuity once a conflicting trademark is validly registered under the Trade Marks Act.
The Court categorically held that the Defendants’ contention that their continuous use of FEDEX as part of their corporate names was protected merely because it pre-dated the Trade Marks Act was misconceived. The Court held that any use by the defendants after the Plaintiff’s registration in Class 36 constitutes infringement, and that every continued use gives rise to a fresh cause of action.
Dealing with the nature of infringement, the Court found that the defendants’ corporate names consist of the identical word “FEDEX”, which is the plaintiff’s registered mark. The Court found that FEDEX is the dominant and essential feature of the defendants’ corporate names, and the addition of the word “Securities” was wholly non-distinctive and legally inconsequential. Relying upon settled law, the Court observed that “mere addition of a generic or descriptive word does not dilute infringement when the essential part of the registered mark is copied.”
The explanation offered by the defendants for adopting the word FEDEX was found to be implausible and an afterthought, unsupported by corporate records or contemporaneous documents. The Court held that the adoption was dishonest, particularly in light of the plaintiff’s global reputation and prior registrations. The Court further stated that the existence of multiple and inconsistent explanations further undermined the defendants’ credibility. Applying the principle that “things speak for themselves”, the Court held that the adoption of the mark was dishonest.
The Court further observed that where the adoption of a mark itself is dishonest, the entire intent is to cause deception and confusion, and such conduct disentitles the infringer from any equitable relief. The Court stated that defendants’ knowledge of the plaintiff’s reputation at the time of adoption weighed heavily against them.
On the aspect of passing off, the Court held that the plaintiff had established extensive goodwill, trans-border reputation, and distinctiveness of the mark FEDEX, which has become “a household word in India.”
The Court rejected the argument that absence of a common field of activity defeated the passing off claim and reiterated that common field of activity is not a prerequisite. The Court held that the defendants’ use of FEDEX as part of their corporate names was bound to deceive and cause confusion, leading the public to believe that the defendants were sister concerns, subsidiaries, or affiliates of the plaintiff.
The Court also rejected the defences of delay and acquiescence and held that mere delay is not a ground to deny injunction, particularly where adoption is dishonest.
Court’s Decision
The Court held that the plaintiff had made out a strong prima facie case, that the balance of convenience lay in favour of the plaintiff, and that irreparable harm would be caused if interim relief were denied.
Accordingly, the Court allowed the interim injunction application and restrained the defendants from using the trademark FEDEX, or any deceptively similar mark, as part of their corporate name, trading style, domain name, or in any manner whatsoever, pending disposal of the suit.
[Federal Express Corpn. v. Fedex Securities (P) Ltd., Interim Application No. 820 of 2021 in COMM IPR Suit No. 1406 of 2019, Decided on 11-12-2025]
Advocates who appeared in this case:
Dr. Veerendra Tulzapurkar, Senior Counsel with Mr. Abhay J.V., Mr. Ameya Gokhale, Mr. Rishabh Jaisani, Mr. Dhruv Grover, Mr. Harit Lakhan and Mr. Abhineet Kalia i/b. Shardul Amarchand Mangaldas, Counsel for the Applicant
Mr. Alankar Kirpekar, Mr. Shekhar Bhagat, Mr. Ayush Tiwari and Mr. Rajas Panandikar i/b. Shekhar Bhagat, Counsel for the Defendants