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IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION
R.I. CHAGLA, J
Federal Express Corporation – Appellant
Versus
Fedex Securities Private Ltd. & Ors. – Respondent
INTERIM APPLICATION NO.820 OF 2021 IN COMM IPR SUIT NO.1406 OF 2019
| Table of Content |
|---|
| 1. legal standing of plaintiff and trademark history. (Para 1 , 2) |
| 2. plaintiff's claims for infringement and passing off. (Para 3 , 4 , 5) |
| 3. trademark reputation and rights under trade marks act. (Para 6 , 7) |
| 4. defendants' alleged justification and past use of trademark. (Para 8 , 9 , 10) |
| 5. implications of section 159(5) and its applicability. (Para 11 , 12) |
| 6. legal grounds for arguing trademark infringement. (Para 13 , 14 , 15) |
| 7. passing off remedy based on confusing similarity. (Para 16 , 17) |
| 8. evidence of plaintiff’s market presence. (Para 18 , 19 , 20) |
| 9. defendants’ conduct concerning the trademark. (Para 21 , 22 , 23) |
| 10. evaluation of defendants' explanation for use of the mark. (Para 24 , 25 , 26) |
| 11. honesty of defendants’ trademark adoption. (Para 27 , 28 , 29) |
| 12. equitable defenses and their relevance. (Para 30 , 31 , 32) |
| 13. claims of delay and acquiescence by defendants. (Para 33 , 34 , 35) |
| 14. prima facie case for interim relief. (Para 36 , 37) |
| 15. overview of interim relief granted. (Para 38) |
| 16. defendants' rebuttal of plaintiff claims. (Para 39 , 40) |
| 17. service marks and their role in the infringement lawsuit. (Para 41 , 42) |
| 18. defense against claims of misrepresentation. (Para 43 , 44 , 45) |
| 19. relevant class under which dispute arises. (Para 46 , 47 , 48) |
| 20. current status of defendants' trademarks. (Para 49 , 50) |
| 21. argument about the plaintiff’s prior market presence. (Para 51 , 52 , 53) |
| 22. proof required for passing off claims. (Para 54 , 55 , 56) |
| 23. defendants’ claims about their brand's origin. (Para 57 , 58 , 59) |
| 24. actual conduct of defendants regarding trademark use. (Para 60 , 61 , 62) |
| 25. injunction basis and proof of irreparable loss. (Para 63 , 64 , 65) |
| 26. conclusion of proceedings and directive for each party. (Para 66 , 67) |
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, e
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