Trademark infringement occurs when a defendant uses a well-known mark in bad faith, causing confusion, irrespective of the addition of non-distinctive terms. The plaintiff is entitled to injunction based on established reputation and dishonesty in mark adoption.

ORDER :

1. By this Interim Application, the Applicant / Original Plaintiff has sought for an order of injunction restraining the Defendants from using / infringing / passing off the Applicant’s trade mark “FEDEX” and for other consequential relief.

2. A brief background of facts is as under:-

(i) The Plaintiff is a corporation organized and existing under the laws of the State of Delaware, United States of America and is a global leader in providing transportation, e-commerce and business services to customers under its reputed and recognized brand known as FEDEX worldwide and in India.

(ii) On 17th April, 1973, the Plaintiff commenced its operations in providing services to customers and businesses for express transportation and delivery of their consignment under the trade mark / name FEDERAL EXPRESS.

(iii) The Plaintiff completed its first public offering of shares and has been listed on New York Stock Exchange under the ticker symbol FDX in 1978.

(iv) The Plaintiff surpassed USD 1 billion in revenues, making history as the first Company in USA to reach this financial hallmark within 10 years of start-up without mergers or acquisitions.

(v) The Plaintiff coined and adopted the trade mark FEDEX, which was a natural and popular abbreviation of Plaintiff’s trade mark / name FEDERAL EXPRESS. The Plaintiff obtained registration of the trade mark FEDEX in various jurisdictions such as Australia, New Zealand, Austria, Benelux, France, USA and UK.

(vi) The Plaintiff acquired Gelco Express International, Courier service and with it gained instant presence in 84 countries including India and propagated its name, branding and identity. (vii) In 1985, the Plaintiff doubled its revenue and became a USD 2 billion corporation.

(viii) The Plaintiff registered its trademark in India in Classes 12, 16, 35, 38, 39 and 42 in the year 1986.

(ix) The Plaintiff registered its domain fedex.com on 26th February, 1991.

(x) The Plaintiff formerly adopted FEDEX as its primary brand and distinct symbol for its worldwide identity in the year 1994. (xi) The Plaintiff launched the website www.fedex.com in the year 1994. This was the first transportation website to offer online online package status tracking, enabling customers to discover news about FEDEX, check service availability, download FEDEX software, and trade their package as it moved through global network.

(xii) In 1996 the Plaintiff became the world’s largest express company serving 211 countries and territories and connecting 99% of the world’s economy. The Plaintiff’s Annual Reports on record illustrate, prominent use of such FEDEX branding on or in relation to corporate identity and services on packaging, boxed, business papers, drop-box kiosks, etc. at least from 1990 onwards.

(xiii) The Defendant No.1 was originally incorporated in the State of Karnataka on 16th January, 1995 under the name of Beandaz Properties and Finvest Private Ltd. Defendant No.1 thereafter changed its name to FEDEX SECURITIES PRIVATE LIMITED on 15th March, 19