Bombay High Court Grants Injunction to Federal Express in Trademark Dispute with Fedex Securities

Court restrains Fedex Securities from using the "FEDEX" trademark, citing infringement and passing off.

In a significant ruling, the Bombay High Court has granted an interim injunction in favor of Federal Express Corporation, prohibiting Fedex Securities Private Limited and its associated entities from using the "FEDEX" trademark. The court found that Fedex Securities' use of the name constituted trademark infringement and passing off, as it was deceptively similar to the well-established "FEDEX" trademark owned by Federal Express.

Presiding Judge R.I. Chagla ruled that the defendants' use of the "FEDEX" name, even with the addition of the word "Securities," was not sufficient to differentiate it from the plaintiff's trademark. The court noted that the addition of descriptive words does not negate infringement. The court also dismissed the defendants' argument that their use of the "FEDEX" name was protected under Section 159(5) of the Trade Marks Act, 1999, as the plaintiff's trademark was registered after the 1999 Act came into force.

The court emphasized that the "FEDEX" mark is recognized as a well-known trademark, and its use by Fedex Securities was likely to deceive and cause confusion among the public. The court also rejected the defendants' explanation that the name "FEDEX" was chosen to reflect their past affiliation with Federal Bank, finding it implausible and an afterthought.

The judgment underscores the importance of protecting well-known trademarks from unauthorized use and reinforces the legal framework provided by the Trade Marks Act, 1999. The court's decision is a significant win for Federal Express Corporation, which has built a global reputation and goodwill under the "FEDEX" brand.

The defendants have been given a six-week stay on the order to allow them to comply or seek an appellate remedy.

Bottom Line:

Trademark Law - Interim injunction granted restraining the Defendants from using, infringing, and passing off the Plaintiff's registered trademark "FEDEX" as part of their corporate name or trading style.

Statutory provision(s): Trade Marks Act, 1999 Sections 28, 29(2), 29(4), 29(5), 159(5).

Federal Express Corporation v. Fedex Securities Private Ltd., (Bombay) : Law Finder Doc Id # 2821402