Bombay HC Restrains Use of ‘FEDEX’ by Financial Entities; Holds S. 159(5) No Shield Against Infringement

Bombay, December 2025: In a significant trademark infringement dispute, the Bombay High Court has granted interim injunctive relief to Federal Express Corporation (FedEx), restraining Indian financial services entities — including FedEx Securities Pvt. Ltd., FedEx Stock Broking Ltd., and FedEx Finance Pvt. Ltd. — from using the name “FEDEX” in their corporate or trade names, domain names, or in any manner that may cause confusion with the plaintiff’s well-known trademark.

The order was passed by Justice R. I. Chagla on 11 December 2025 on an interim injunction application filed by Federal Express Corporation, the Delaware-based global logistics and courier services major that owns multiple registered trademarks for FEDEX in India since 1986. 

The defendants, which operate in the financial services sector, relied predominantly on Section 159(5) of the Trade Marks Act, 1999, contending that their long-standing use of their corporate names pre-dated the 1999 Act and should be protected. The Court rejected this defence, clarifying that Section 159(5) is a narrow “saving clause” that preserves only previously non-infringing uses under the old 1958 legislation and does not confer a perpetual right to continue using a mark conflicting with a validly registered and well-known trademark. 

In its analysis, the Court observed that the defendants’ corporate names were identical or deceptively similar to the plaintiff’s registered FEDEX mark, and the addition of generic descriptors such as “Securities”, “Stock Broking”, or “Finance” was legally inconsequential to avoid confusion or deception. The Court also noted that the explanation offered by the defendants for adopting the FEDEX name was implausible and an afterthought, undermining their credibility. 

Finding that the plaintiff had made out a strong prima facie case of trademark infringement and passing off, and that denial of relief would cause irreparable harm, the High Court granted the interim injunction and directed that the defendants, pending final disposal of the suit, desist from using the word “FEDEX” or any deceptively similar mark in connection with their business identities.

This ruling reiterates that well-known trademarks enjoy expansive protection under Indian law, and that dishonest adoption or confusing imitation of a globally recognized mark cannot be sheltered by statutory saving provisions.