Trademark Law Must Protect Reputation, Not Reward Delay Tactics: Bombay High Court Grants Injunction to FedEx Against Dishonest Use of Its Well-Known Mark

“Section 159(5) cannot be a shield for dishonest use of a globally known mark adopted after 1999”, In a significant ruling that reaffirms the strength of well-known trademarks and condemns dishonest adoption cloaked as legacy use, the Bombay High Court’s Commercial Division granted a sweeping interim injunction in favour of Federal Express Corporation (FedEx) against the use of the mark “FEDEX” by three Indian financial services companies. The Court held that Section 159(5) of the Trade Marks Act, 1999 cannot shield the “continued use” of a deceptively similar mark when that use is dishonest, post-dates the plaintiff’s rights, and amounts to infringement under the 1999 regime.

Justice R.I. Chagla ruled in favour of the global logistics giant, noting that “the Defendants' continued use of ‘FEDEX’ for financial services constitutes infringement, passing off, and dilution of the Plaintiff’s registered and well-known mark” and further held that “the defence under Section 159(5) is inapplicable in cases of dishonest adoption or post-1999 use.”

The Court restrained the three defendant companies, including Fedex Securities Pvt. Ltd., Fedex Stock Broking Ltd., and Fedex Finance Pvt. Ltd., from using the word “FEDEX” in any form or variation, including as part of their corporate names, domain names, or trading styles.

“Dishonest adoption cannot enjoy the sanctuary of a saving clause”: Court rejects Defendants’ Section 159(5) defence

The defendants’ principal defence was rooted in Section 159(5) of the Trade Marks Act, which saves continued use of a registered mark that was not considered infringement under the 1958 Act. However, the Court noted that:

“Section 159(5) is a saving clause that protects only those uses which were not infringing under the 1958 Act. It does not extend to protect new uses, particularly where the Plaintiff’s mark was registered after 1999 and the Defendants’ conduct is dishonest.” (Para 69)

The Court pointedly observed that the Plaintiff, FedEx, had registered its mark in Class 36 (financial services) in 2012, long after the enactment of the 1999 Act, and held:

“The Plaintiff’s mark having been registered after the commencement of the 1999 Act, the rights conferred by such registration under Section 28 cannot be violated by the Defendants using the impugned mark.” (Para 72)

“Defendants’ explanation is implausible and an afterthought”: High Court discredits defence of legacy use

The Defendants claimed they adopted “Fedex” in 1996 as a nod to their past affiliation with Federal Bank, interpreting it as an abbreviation of “Federal Executives”. Justice Chagla rejected this rationale as “implausible”, observing:

“The explanation for adoption is not only unsubstantiated but inconsistent. The name change was made without any disclosed rationale at the time. The reasons offered later appear to be fabricated to justify a name already adopted with full knowledge of the Plaintiff’s brand.” (Para 75)

In fact, the Plaintiff showed that only one out of several directors had any link to the Federal Bank, and that too was not cited in any corporate filings or resolutions. The Court concluded:

“Where there are two different versions with no proof of either, and where the explanation appears to be an afterthought, such adoption must be treated as dishonest.” (Para 76)

“Well-known trademarks demand higher protection across unrelated fields”

The Plaintiff successfully argued that the FEDEX mark, globally renowned for courier and logistics services, enjoys well-known status, formally recognised by the Indian Trademark Registry in February 2024.

“FEDEX has become a household word in India. Its trans-border reputation, continuous presence, and substantial goodwill make it a well-known mark deserving of the highest level of protection.” (Para 79)

Despite the Defendants operating in financial services, the Court reaffirmed the principle that use in a different class of services is no defence when the Plaintiff’s mark is well-known. Citing Kirloskar, Mahindra, and Cadila, the Court held:

“There is no requirement to establish common field of activity in a passing off action. Deceptive similarity and dishonesty are sufficient.” (Para 82)

“Passing off is broader than infringement and includes deception, dilution and unfair advantage”

The Court found that the Defendants’ use of ‘FEDEX’ in corporate names would mislead the public into assuming a connection, endorsement, or affiliation with the Plaintiff. This, the Court held, constituted passing off, especially given the phonetical identity and strong consumer association with the FEDEX brand.

“The Defendants’ mark being phonetically identical with the Plaintiff’s well-known mark causes deception and confusion, likely leading to an assumption of agency or corporate affiliation.” (Para 80)

Equitable Pleas of Delay and Acquiescence Rejected

In what will be an important reaffirmation for trademark plaintiffs, the Court firmly rejected the Defendants' claim that the Plaintiff had delayed legal action. Noting the Plaintiff’s prompt objections and attempts at amicable resolution, the Court held:

“Delay is no defence in cases of dishonest adoption. The Plaintiff acted promptly upon discovering the use, and has not acquiesced in any form.” (Para 84)

Citing Midas Hygiene, Power Control Appliances, and Abdul Rasul v. Regal Footwear, the Court reinforced that “injunction must follow” once dishonesty is established.

Balance of Convenience and Irreparable Harm Favours Plaintiff

The Court noted that the Defendants’ continued use of the FEDEX name would damage the distinctive character of the Plaintiff’s mark and mislead consumers, resulting in irreparable loss. It added:

“Allowing the Defendants to operate under a deceptively similar name would amount to putting a premium on dishonesty.” (Para 85)

Consequently, the Court held:

“Once a prima facie case of infringement is made out in favour of the registered proprietor of a well-known mark, injunction ought to follow.” (Para 85)

Relief Granted: Wide-Ranging Injunction Restraining All Use of FEDEX by Defendants

The Court granted interim relief in terms of prayer clauses (a), (b), and (c), which effectively restrain the use, registration, and application of the FEDEX mark in any corporate name, domain name, trading style, website, or email identity by the Defendants or their affiliates.

The judgment’s operation is stayed for six weeks to allow the Defendants to approach the Appellate Court, if they so desire.

A Strong Message Against Dishonest Corporate Naming

This landmark ruling sends a clear signal to Indian businesses and global brand owners alike: well-known marks will be protected across sectors, and the law will not reward strategic delay or post-hoc justifications for deceptive naming.

In echoing the Supreme Court’s observations on dilution and unfair advantage, the Bombay High Court has rightly reinforced that trademark law protects the integrity of a brand, not just from exact replicas, but from commercial opportunism masquerading as legacy use.

Date of Decision: December 11, 2025