Authority: High Court of Judicature at Madras

Order Date: 15-10-2026

Case Overview

  • Parties: Appellant – INEXO Cast Metal Solutions Pvt Ltd (manufacturer of foundry chemicals); Respondents – Federal Express Corporation (owner of the "FEDEX" mark) and Assistant Registrar of Trade Marks, Chennai.
  • Nature of Proceeding: Civil Miscellaneous Appeal (CMA(TM) No. 4 of 2025) under Section 91 of the Trade Marks Act, 1999, challenging the Assistant Registrar’s order dated 21‑10‑2024 which refused registration of the mark "FEDEXO" (Application No. 1888861, Class 1).
  • Timeline & Key Filings:
  • 26‑11‑2009 – Applicant filed Form TM‑1 for "FEDEXO" in Class 1, claiming continuous use since 05‑09‑2007.
  • 20‑09‑2010 – Examination report objected on the ground of similarity with "FEDEX500" (Application No. 896439, Advanced Biochemicals Ltd).
  • 20‑11‑2012 – Registry directed advertisement; mark advertised in Trade Marks Journal No. 1565 on 03‑12‑2012.
  • 06‑03‑2013 (noticed 14‑03‑2013) – Federal Express filed Opposition No. 800164, asserting prior use of "FEDEX" since 1984, registrations dated 06‑08‑1986 (Nos. 458159, 458162), and well‑known status.
  • 19‑07‑2013 – Applicant’s counter‑statement denied well‑known status and asserted honest adoption of "FEDEXO" since 2007.
  • 2013‑2014 – Both parties submitted affidavits, invoices, Chartered Accountant’s certificate (turnover Rs 9,58,83,146 in 2007‑08 to Rs 17,35,82,623 in 2012‑13), and documentary evidence.
  • 10‑07‑2024 – Opposition heard; written submissions filed on 25‑07‑2024 (respondent) and 26‑07‑2024 (applicant).
  • 21‑10‑2024 – Assistant Registrar issued impugned order refusing registration, relying on the applicant’s alleged lack of use of "FEDEXO" from 05‑09‑2007 and the well‑known status of "FEDEX".
  • Key Arguments:
  • Applicant: Claimed "FEDEXO" was honestly coined from "FED" (feeder materials) + "EXO" (exothermic sleeves) and used continuously since 2007; argued distinctiveness of goods (foundry chemicals vs. transport services) and absence of confusion.
  • Respondent: Asserted "FEDEX" is a well‑known mark (Serial No. 246, Registry list, recognised since 1984), that "FEDEXO" is deceptively similar, that applicant’s claim of use from 2007 is false (earliest "FEDEXO" invoice 13‑05‑2010), and that applicant acted in bad faith.
  • Court’s Legal Framework: Considered Sections 11(2), 11(6)‑(10), 12, 18 of the Trade Marks Act; examined cumulative requirements for protection of well‑known marks across classes; evaluated evidence of prior use, reputation, and bad‑faith indicators.
  • Findings:
  • "FEDEXO" incorporates the entire earlier mark "FEDEX" with only the addition of the letter “O”; similarity is substantial.
  • Evidence establishes that "FEDEX" had acquired well‑known status in India before the applicant’s filing date (registrations from 1986, advertising, worldwide revenue US $35.5 bn in 2009, awards, etc.).
  • Applicant’s claim of continuous use of "FEDEXO" from 05‑09‑2007 is contradicted by invoices (first "FEDEXO" appearance 13‑05‑2010) and the applicant’s own admission that the mark was modified only after a 04‑11‑2009 objection from Foseco.
  • The inconsistencies and misstatements constitute bad‑faith under Section 11(10)(ii).
  • Despite the dissimilarity of goods, Section 11(2) applies because well‑known marks enjoy protection beyond their registered classes; use of "FEDEXO" would take unfair advantage of the reputation of "FEDEX".

Final Outcome

  • The Civil Miscellaneous Appeal is dismissed.
  • The order dated 21‑10‑2024 refusing registration of "FEDEXO" (Application No. 1888861, Class 1) is confirmed.
  • No costs are awarded to either party.
  • The erroneous reference to a letter dated 28‑11‑2011 is corrected to 28‑11‑2009 addressed to Foseco International Limited.

Topics: Trademark Law, Well‑known Marks