Bombay High Court restrains Fedex Securities from using ‘FEDEX’ in trademark case

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 the well‑known mark of Federal Express Corporation (FedEx). [Federal Express Corporation v. Fedex Securities Pvt Ltd.]..The order was passed by a single‑judge Bench of Justice RI Chagla on an interim application in a trademark and passing off suit filed by Federal Express Corporation, the Delaware‑incorporated global logistics major, against Fedex Securities Pvt Ltd, Fedex Stock Broking Ltd and Fedex Finance Pvt Ltd (defendants).Federal Express (FedEx) had asserted that the defendants' use of the Fedex mark infringed the former's rights in its registered trademark FEDEX in multiple classes..The Court granted a broad 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, in advertising or on business papers, pending trial. However, the operation of the order has been stayed for six weeks to enable the defendants to comply with and/ or avail appellate remedies..FedEx relied on its registrations for FEDEX in India covering insurance, financial and monetary services, to assert exclusive rights over this mark under Sections 28 and 29 of the Trade Marks Act. The Court also noted a 2024 declaration by the Trade Marks Registry recognising FEDEX as a “well‑known” mark in India, which strengthened FedEx’s ability to invoke Section 29(4) and 29(5) even beyond its core courier business..The defendants had 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 that their long‑standing use of the mark for financial services constituted “continued use” protected by Section 159(5) of the 1999 Act. They submitted that this savings clause barred FedEx from suing them for infringement based on later service‑mark registrations..The Court rejected this defence as misconceived, holding that the provision is a limited savings clause that protected only a “particular use” which was not an infringement under the 1958 Act but later became infringing because of changes introduced in 1999.Justice Chagla observed that the 1999 Act for the first time treated certain acts, such as the use of a mark on business papers or its use in advertising, and use leading to dilution, import and export, as well as oral use, as infringement. Section 159(5) merely permits those specific uses to continue if they pre‑dated 1999, the Court noted.In the present case, however, the Court emphasised that FedEx obtained a Class 36 registration after the 1999 Act and FEDEX is now officially recognised as a well‑known mark. Therefore, any use of ‘Fedex’ by the defendants for financial services after that registration amounts to infringement, it concluded. Justice Chagla also found that FedEx had produced sufficient evidence to show that FEDEX has acquired distinctiveness and trans‑border reputation in India and has become a “household word."The Court held that use of ‘Fedex’ in the defendants’ corporate names is likely to cause the public to see them as a sister concern, subsidiary or agency of FedEx..Senior advocate Veerendra Tulzapurkar, briefed by a team from Shardul Amarchand Mangaldas, including partners JV Abhay, Ameya Gokhale, Rishabh Jaisani, senior associates Dhruv Grover and Harit Lakhan, and associate Abhinet Kalia, appeared for FedEx.Advocates Alankar Kirpekar, Shekhar Bhagat, Ayush Tiwari and Rajas Panandikar appeared for the defendant-FEDEX entities..[Read order].Follow Bar and Bench channel on WhatsAppDownload the Bar and Bench Mobile app for instant access to the latest legal news.