Bombay High Court Bars Fedex Securities from Using ‘FEDEX’ Name
The Bombay High Court has passed an interim order restraining Mumbai-based Fedex Securities Private Limited and its group companies from using the name “FEDEX” in any manner connected with their business.
The Court held that the use of “FEDEX” by these companies amounts to trademark infringement, passing off, and dilution of the well-known trademark owned by Federal Express Corporation, popularly known as FedEx.
The order was passed by a single-judge Bench of Justice R.I. Chagla in a trademark suit filed by FedEx against Fedex Securities Pvt Ltd, Fedex Stock Broking Ltd, and Fedex Finance Pvt Ltd. FedEx argued that it holds valid trademark registrations for “FEDEX” in several classes in India, including financial and insurance services.
The Court noted that in 2024, the Trade Marks Registry officially recognised “FEDEX” as a well-known trademark in India. This status allows FedEx to stop even unrelated businesses from using the mark if such use causes dilution or confusion.
The defendants claimed they had been using “Fedex” in their company names since the mid-1990s, before service marks became registrable in India. They argued that their continued use was protected under the savings clause of the Trade Marks Act, 1999. However, the Court rejected this defence, clarifying that the protection applies only to very limited uses that were lawful under the earlier law.
Justice Chagla observed that after FedEx obtained trademark registration for financial services and after the mark was declared well-known, any continued use of “Fedex” by the defendants became infringing. The Court also accepted FedEx’s claim that the brand enjoys strong global reputation and public recognition in India.
The Court granted a wide interim injunction restraining the defendants from using “FEDEX” or any similar mark as a corporate name, trademark, domain name, email ID, or in advertisements and business documents. However, the order has been stayed for six weeks to allow the defendants time to comply or approach an appellate court.
