Bombay High Court Rejects Section 159 Defence, Holds ‘Fedex’ Use Infringing
Bombay High Court Rejects Section 159 Defence, Holds ‘Fedex’ Use Infringing
Introduction
In a decisive order reinforcing the expansive protection accorded to well-known trademarks, the Bombay High Court restrained Mumbai-based financial entities from using the mark ‘FEDEX’, holding that such use constitutes trademark infringement, passing off, and dilution. The judgment showcases that once a mark attains well-known status, its protection travels far beyond the owner’s core business.
Factual Background
The plaintiff, Federal Express Corporation, popularly known as FedEx, is a globally renowned logistics and delivery company incorporated in Delaware, USA. FedEx is the registered proprietor of the trademark FEDEX in multiple classes in India, including Class 36, covering insurance, financial, and monetary services.
The defendants Fedex Securities Pvt Ltd, Fedex Stock Broking Ltd, and Fedex Finance Pvt Ltd are Mumbai-based companies engaged in financial services and have been using ‘Fedex’ as part of their corporate and trading names. FedEx alleged that this use was calculated to trade upon its reputation and goodwill and created a false impression of association with the global FedEx brand.
Procedural Background
FedEx instituted a suit for trademark infringement, passing off, and dilution before the Bombay High Court. The matter came up before a single-judge Bench of Justice R.I. Chagla on an interim application seeking urgent injunctive relief pending trial.
Issues
1. Whether the defendants’ use of ‘FEDEX’ amounted to infringement, passing off, and dilution of a well-known trademark.
2. Whether the defendants could claim protection under Section 159(5) of the Trade Marks Act, 1999 on the basis of long-standing use.
3. Whether FedEx could restrain use of its mark in the financial services sector, beyond logistics and courier services.
Contentions of the Parties
Plaintiff: FedEx contended that it enjoys exclusive statutory rights over the FEDEX mark under Sections 28 and 29 of the Trade Marks Act, 1999. It relied heavily on the 2024 declaration by the Trade Marks Registry recognising FEDEX as a “well-known mark” in India, enabling it to invoke Sections 29(4) and 29(5) even in respect of dissimilar services. FedEx further argued that the defendants’ corporate names were likely to mislead consumers into believing that the defendants were associated with or endorsed by FedEx.
Defendants: The defendants argued that they had adopted the name ‘Fedex’ in the mid-1990s, at a time when service marks were not registrable under the Trade and Merchandise Marks Act, 1958. They contended that their long-standing use was protected as “continued use” under Section 159(5) of the Trade Marks Act, 1999, which barred FedEx from enforcing later registrations against them.
Reasoning and Analysis
Justice R.I. Chagla firmly rejected the defendants’ reliance on Section 159(5), characterising the defence as fundamentally misconceived. The Court clarified that Section 159(5) is not a blanket immunity for all pre-1999 uses. It was observed by the Court that:
“Section 159(5) is a limited savings clause which protects only such particular use which was not an infringement under the 1958 Act but has become infringing solely because of the changes introduced by the 1999 Act.”
The Court went on to explain that the Trade Marks Act, 1999 significantly expanded the scope of infringement by, for the first time, recognising acts such as use of a mark on business papers, use in advertising, dilution, import and export, and even oral use as infringing acts. Justice Chagla noted that, “The 1999 Act for the first time treated several acts as infringement which were not so recognised under the earlier law; Section 159(5) merely permits the continuation of those specific acts if they pre-dated the 1999 Act.”
The observed that FedEx had obtained post-1999 registration in Class 36 and that FEDEX is now a recognised well-known mark in India. In view of this, the defendants could not claim protection under Section 159(5), and any continued use of ‘Fedex’ for financial services was held to be infringing.
The Court also accepted FedEx’s evidence of trans-border reputation, observing that FEDEX has become a household name in India. It held that the use of ‘Fedex’ in the defendants’ corporate names was likely to mislead the public into believing an association with FedEx, thereby attracting the doctrines of passing off and dilution.
Decision
The Bombay High 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. However, the Court stayed the operation of the injunction for six weeks, granting the defendants time to comply with the order and/or avail appellate remedies.
In this case the plaintiff was represented by Dr. Veerendra Tulzapurkar, Senior Counsel with Mr. Abhay J.V., Mr. Ameya Gokhale, Mr. Rishabh Jaisani, Mr. Dhruv Grover, Mr. Harit Lakhan and Mr. Abhineet Kalia from Shardul Amarchand Mangaldas.
Meanwhile the defendant was represented by Mr. Alankar Kirpekar, Mr. Shekhar Bhagat, Mr. Ayush Tiwari and Mr. Rajas Panandikar instructed by Mr. Shekhar Bhagat.
