The Madras High Court has reaffirmed the expansive protection accorded to well-known trademarks, dismissing an appeal against the refusal of registration of FEDEXO in Class 1. Finding that the impugned mark substantially incorporated the well-known mark FEDEX, the Court rejected the appellant’s claims of honest adoption and prior use. It further held that the use of FEDEXO for dissimilar goods, in the absence of due cause, would amount to taking unfair advantage of and causing detriment to the distinctive character and reputation of FEDEX.

Background

The appellant, Inexo Cast Metal Solutions Pvt. Ltd. filed the appeal challenging the order passed by the Assistant Registrar of Trademarks, Chennai, allowing the Opposition and refusing registration of the mark FEDEXO in Class 1.

The appellant, engaged in the manufacture and sale of foundry materials, filed an application in November 2009 for registration of FEDEXO, claiming use since September 2007. During examination, the Registry raised an objection citing the earlier mark FEDEX500 registered for enzymes. The appellant disputed the similarity between the marks, questioned the validity of the cited registration and relied on its claimed honest adoption and continuous use.

Following advertisement of the application, the first respondent Federal Express Corporation opposed the application, asserting its prior adoption, use and registrations of FEDEX in India since 1984. The opponent contended that FEDEX was a well-known trademark and that FEDEXO was deceptively similar, with its registration likely to take unfair advantage of and cause detriment to the distinctive character and reputation of FEDEX.

The appellant maintained that FEDEXO was an independently coined mark derived from “FED”, referring to feeder materials, and “EXO”, referring to exothermic sleeves. It disputed FEDEX’s well-known status and contended that the parties operated in different commercial fields.

The Assistant Registrar rejected the appellant’s claim of continuous use since September 2007, noting its earlier statement that the mark had been modified from FEDEX to FEDEXO. Having recognised FEDEX as a well-known trademark and found FEDEXO deceptively similar, the Registrar allowed the opposition and refused registration.

Aggrieved by the decision, the appellant approached the High Court.

Appellant’s Submissions

1. FEDEX and FEDEXO were visually, phonetically and commercially distinct and that the marks ought to be compared as a whole.
2. There could be no likelihood of confusion, as the appellant’s specialised foundry products were entirely different from the respondent’s transportation services, with distinct consumers and trade channels.
3. The Registrar had mechanically relied on FEDEX’s well-known status without examining the extent of its reputation in the appellant’s market.
4. FEDEXO had been honestly adopted in 2009, deriving from “FED” and “EXO”, and relied on the absence of actual confusion or infringement proceedings for several years.
5. FEDEX was formally recognised as a well-known trademark only in February 2024, and such recognition could not retrospectively invalidate the appellant’s earlier adoption.

Respondent’s Submissions

1. FEDEX was a prior adopted, extensively used and registered trademark, enjoying well-known status and protection across classes. FEDEXO, by reproducing FEDEX in its entirety with the addition of the letter “O”, was deceptively similar.
2. The appellant had initially adopted FEDEX and modified it to FEDEXO only after receiving a third-party objection. Its explanations for the adoption of the mark were alleged to be afterthoughts, unsupported by contemporaneous documents.
3. The extensive use, registrations, advertising, turnover, awards and international judicial recognition established that FEDEX had acquired substantial reputation in India well before 2009.
4. The appellant’s inconsistent explanations and lack of invoices evidencing use before May 2010 demonstrated dishonest adoption and absence of due cause.

Court’s Analysis and Findings

• Similarity between FEDEX and FEDEXO

The Court rejected the appellant’s contention that the marks were visually and phonetically distinct. It observed that FEDEXO reproduced the registered mark FEDEX in its entirety, with only the addition of the letter “O”.

Applying the test of comparison from the perspective of a purchaser of average intelligence and imperfect recollection, the Court held that the marks were substantially similar.

• Well-known status of FEDEX prior to 2009

The Court held that the formal recognition of FEDEX as a well-known trademark in February 2024 did not preclude it from having acquired such status before the appellant’s application was filed in November 2009.

The respondent’s evidence of extensive use in India and internationally since 1984, registrations, advertising, turnover, awards and foreign judicial recognition sufficiently established its reputation and well-known status prior to 2009.

The subsequent inclusion of FEDEX in the Registry’s list of well-known trademarks merely recorded a status that had already been acquired. As the appellant failed to establish honest prior adoption of FEDEXO, the Court answered this issue in favour of the respondent.

• Honest adoption, due cause and bad faith

The Court rejected the appellant’s claim of honest and independent adoption.

Although the appellant relied on its use of other marks incorporating the prefix “FED” and claimed that FEDEXO was derived from feeder materials and exothermic sleeves, its own correspondence indicated that it had initially used FEDEX and subsequently modified the mark to FEDEXO following an objection from a third party.

The claim of continuous use since September 2007 was also contradicted by the appellant’s correspondence and invoices, the earliest of which referred to FEDEXO only in May 2010.
The Court took note of the unexplained discrepancies and the repeated assertion of the earlier user claim in the appellant’s pleadings and supporting documents, finding them indicative of bad faith.

• Protection of well-known marks across dissimilar goods

The Court acknowledged that the appellant’s foundry-related goods in Class 1 were dissimilar to the respondent’s goods and services in Classes 12, 16 and 39, and that the parties operated in different commercial fields. However, it held that such dissimilarity did not preclude protection o0f a well-known mark.

Given that FEDEXO substantially incorporated the distinctive and well-known mark FEDEX, its use without due cause would take unfair advantage of, and be detrimental to, the distinctive character and reputation of FEDEX.

• Actual confusion, examination report and other contentions

The Court rejected the appellant’s reliance on the absence of actual confusion or separate infringement proceedings over several years.

It held that proof of actual confusion was not indispensable and it independently protects well-known trademarks against unfair advantage and detriment to their distinctive character or reputation.

The Court also noted that the respondent had initiated opposition proceedings in 2013. The omission of FEDEX from the examination report did not prevent the respondent from opposing the application.

Decision

The Madras High Court dismissed the appeal and confirmed the order passed by the Assistant Registrar of Trademarks, refusing registration of FEDEXO in Class 1.

Takeaway

1. The decision reinforces the broad protection available to well-known trademarks against the use of substantially similar marks even in relation to dissimilar goods and services.
2. The formal recognition as a well-known trademark is not necessarily the point at which such status arises; the underlying reputation and goodwill may be established through evidence of prior use and recognition.
3. Claims of honest adoption and prior use must be supported by consistent and contemporaneous evidence.
4. The absence of actual confusion, the existence of different trade channels or the omission of a prior mark from the examination report will not, by themselves, overcome the protection afforded to a well-known trademark.