Federal Express Corporation Vs. Fedex Securities Pvt.Ltd:

Federal Express Corporation, a global transportation and e-commerce leader, adopted the FEDEX mark in 1973 as an abbreviation of Federal Express, registered it internationally including in India from 1986 in various classes, and established significant reputation and presence in India through operations, acquisitions, and domain names. 

Defendants, financial services companies, incorporated in 1995-1998 and changed names to include FEDEX in 1996-2001, claiming it derived from founders' Federal Bank affiliation, and registered domain fedexindia.in in 2011. Plaintiff discovered this in 2011, sent cease-and-desist notices demanding discontinuation, but defendants refused, leading to failed settlement talks. 

Plaintiff filed infringement and passing-off suit in Delhi High Court in 2014, which returned the plaint in 2017 for lack of jurisdiction, allowing presentation in Bombay High Court, where it was registered in 2019. 

In the interim application, plaintiff argued infringement under Sections 29(4) and 29(5) of Trade Marks Act 1999, passing off, and dilution of well-known mark FEDEX (declared well-known in 2024 but claimed so since 1986). 

Court reasoned that defendants' use of identical mark as essential part of corporate names constituted infringement despite added words like 'Securities', adoption was dishonest without due cause, plaintiff's mark had trans-border reputation and distinctiveness in India causing confusion/deception, no common field required for passing off, delay not fatal absent acquiescence, balance of convenience favored plaintiff with mala fides on defendants' part, and irreparable harm if not restrained. 

Court granted interim injunction restraining defendants from using FEDEX or similar marks in any manner, disposed application without costs.

Legal Points

Addition of non-distinctive words like 'Securities' to an identical registered trademark does not avoid infringement as the registered mark forms the essential feature of the impugned name: Ruston & Hornsby Ltd. v. Zamindara Engineering Co., AIR 1970 SC 1649, para 5.

Well-known trademark owner can prevent use of identical/deceptively similar mark for any goods/services under Section 29(5): Journal No.2144 dated 19th February 2024 declaring FEDEX well-known, para 6.

For dilution under Section 29(4), prove adoption without due cause, reputation in India, unfair advantage/detriment to distinctive character/repute: RPG Enterprises Ltd. v. Riju Kaushal, (2022) 90 PTC 312, paras 39-45, para 8, 11.

Case Title: Federal Express Corporation Vs. Fedex Securities Pvt.Ltd:11.12.2025: Comm IPR Suit No.1406 of 2019:  R.I. Chagla H. J.

[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]

[Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi]