Bombay High Court Temporarily Restrains Financial Companies From Infringing 'FEDEX' Trademark

The Bombay High Court has restrained Maharashtra-based FedEx Securities Pvt. Ltd. and its group companies from using the word “FEDEX” in their corporate names, holding that the term is globally and exclusively associated with Federal Express Corporation, the US logistics major. Justice R I Chagla passed the order on December 11, allowing Federal Express Corporation's plea for interim protection of its trademark. The court found that the financial services group had no legitimate basis to adopt the identical name. Federal Express told the ourt that it has held multiple “FEDEX” trademark registrations in India since 1986, obtained registration for financial services in 2012, and that the mark was declared a well-known trademark in February 2024.The dispute began when Federal Express objected to the use of “FEDEX” by three financial entities: FedEx Securities Pvt. Ltd., FedEx Stock Broking Ltd. and FedEx Finance Pvt. Ltd. Federal Express said these companies were originally incorporated under different names and later switched to using “FEDEX” despite repeated objections documented since 2011. The financial service companies argued that the name came from a past association one of their directors had with Federal Bank. They also claimed protection under Section 159(5) of the Trade Marks Act, saying their continuous use before the 1999 law came into force shielded them from infringement claims. The court rejected both arguments and said the explanation for adopting the name appeared to be an afterthought. It noted that only one director had any link to Federal Bank and that the documents relating to the name change did not mention this justification. The court observed, “It is well settled that where explanation for adoption of the mark is not honest and there are two different versions with different reasons and which reasons themselves are not proved, such explanation should be disregarded on the principle that things speaks for themselves.”The court also rejected the companies' claim that they were protected because they had been using the name before the current trademark law came into force. The Court explained that this protection applies only when the earlier use was lawful. In this case, Federal Express later obtained trademark registration for financial services, and once that happened, any continued use of the identical “FEDEX” name for similar services became unlawful and amounted to infringement. It referred to the Supreme Court's ruling in Ruston and Hornsby Ltd. v. Zamindara Engineering Co. and said minor additions to a mark do not avoid confusion when the essential feature is copied. It found that adding the non-distinctive word “Securities” did not create any real distinction.The court held that Federal Express had established a prima facie case of infringement and passing off, given the reputation of FEDEX mark and lack of due cause for financial services group's adoption of the identical name. It added, “The Defendants mark being phonetically identified with the Plaintiff's mark as well as the Plaintiff's mark being so well known, any use by the Defendants of the impugned mark is detrimental to the distinctiveness of the Plaintiff's mark and would cause damage to the distinctive character of the Plaintiff's mark.” Consequently, it restrained the financial services group from using “FEDEX” or any deceptively similar name in any manner including as a corporate name, domain name or email address. The court also restrained the group from applying for or obtaining registration for any mark containing the word “FEDEX.” Case Title: Federal Express Corporation v. Fedex Securities Private Ltd. & Ors. Case Number: IA 820/2021 in Comm IPR Suit No. 1406/2019 For Plaintiff: Senior Advocate Veerendra Tulzapurkar with Advocates Abhay J V, Ameya Gokhale, Rishabh Jaisani, Dhruv Grover, Harit Lakhan and Abhineet Kalia instructed by Shardul Amarchand Mangaldas For Defendants: Advocates Alankar Kirpekar, Shekhar Bhagat, Ayush Tiwari and Rajas Panandikar instructed by Shekhar Bhagat. Click Here To Read/download Order

Bombay High Court Temporarily Restrains Financial Companies From Infringing 'FEDEX' Trademark

Ayushi Shukla

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