FedEx’s pre-2009 reputation blocks foundry firm’s “FEDEXO” trademark registration, Madras High Court rules

The appellant applied on 26 November 2009 to register the word mark “FEDEXO” in Class 1 for foundry-related chemical products, claiming use from 5 September 2007.

Federal Express opposed the application, asserting its prior rights in “FEDEX” and its reputation as a well-known mark.

The appellant’s evidence showed that it had initially used “FEDEX” and changed it to “FEDEXO” in November 2009 following an objection from Foseco International Limited; its earliest invoice bearing “FEDEXO” was dated 13 May 2010, despite its earlier claimed-use date.

The Assistant Registrar allowed the opposition and refused registration.

1. Whether “FEDEXO” is identical or similar to “FEDEX”.

2. Whether “FEDEX” had become a well-known trade mark in India by 26 November 2009, and what effect its inclusion in the Registry’s well-known marks list in February 2024 had.

3. Whether the appellant had due cause to adopt and use “FEDEXO,” could establish honest concurrent use under Section 12, and acted in bad faith.

4. Whether use of “FEDEXO” for dissimilar goods would take unfair advantage of, or be detrimental to, the distinctive character or reputation of “FEDEX,” within Section 11(2).

5. Whether the remaining contentions—including no proven confusion or infringement suit, omission of “FEDEX” from the examination report, the cited “FEDEX500” mark, and reliance on Section 29(4)—affected the registration claim.

Section 11(2) of the Trade Marks Act, 1999 bars registration of a similar mark for dissimilar goods or services where the earlier mark is well known in India and use of the later mark, without due cause, would take unfair advantage of, or be detrimental to, the earlier mark’s distinctive character or repute; these requirements are cumulative.

Sections 11(6), 11(7) and 11(9) govern assessment of well-known status, while Section 11(8) requires the Registrar to treat a mark as well known once it has been determined to be so in at least one relevant section of the Indian public.

Section 11(10) requires protection of well-known marks and consideration of bad faith.

The Court also applied Section 12 concerning honest concurrent use and the principle in *Amritdhara Pharmacy v. Satya Deo Gupta*, AIR 1963 SC 449, that similarity is assessed from the perspective of a purchaser of average intelligence and imperfect recollection.

It relied on *Lego Juris A/S v. Gurumukh Singh*, 2024 SCC OnLine Mad 4858, and *Paragon Polymer Products Pvt. Ltd. v. Sumar Chand Nahar*, 2025 SCC OnLine Mad 3899, in considering whether reputation existed at the relevant date and the effect of subsequent recognition.

“FEDEXO” reproduced “FEDEX” in its entirety, with only the addition of “O,” which the appellant’s Managing Director had described as an insignificant change; the marks were therefore substantially similar.

The evidence of Indian use and registrations, promotion, awards and international reputation established that “FEDEX” had acquired well-known status before the appellant’s application; its 2024 listing was evidence of that status, not its sole basis.

The appellant’s own documents showed that “FEDEXO” was adopted only after Foseco’s 2009 objection, while invoices and other records contradicted the claimed 2007 use.

The Court found the adoption explanation unsatisfactory and the repeated earlier-use claims indicative of bad faith; neither due cause nor honest concurrent use was established.

Although the goods and services were dissimilar, the breadth of the applied-for specification and the circumstances of adoption supported the conclusion that use of “FEDEXO” would take unfair advantage of, and weaken the distinctive association of, “FEDEX”.

Actual confusion was not necessary under Section 11(2), and the other objections did not alter the result.

It held that the refusal of registration was sustainable notwithstanding errors and deficiencies in the Assistant Registrar’s reasoning.

The appeal was dismissed, confirming refusal of registration of “FEDEXO” under Application No. 1888861 in Class 1.

The impugned order’s reference to a letter dated 28 November 2011 was directed to be read as referring to the appellant’s letter dated 28 November 2009 to Foseco.

There was no order as to costs, and the findings were confined to registration, leaving infringement and passing-off issues open.