The Madras High Court has clarified that Section 11(2) of the Trade Marks Act, 1999, cumulatively requires mark similarity, well-known status in India, and use without due cause that takes unfair advantage of or harms the earlier mark’s reputation. Hence, FEDEX’s established pre-application reputation, FEDEXO’s substantial similarity, and the appellant’s failure to establish due cause justified refusal of registration.
The Court held that FEDEXO reproduced FEDEX in its entirety and that the marks, assessed as a whole through the eyes of a purchaser of average intelligence and imperfect recollection, were substantially similar. It found that evidence established FEDEX’s well-known status in India before the application dated 26 November 2009. Its inclusion in the Registry’s list in February 2024 recorded that status.
Thus, the High Court rejected the claimed use of FEDEXO since 2007 because the correspondence showed its introduction only in November 2009. Unexplained misstatements concerning adoption and use indicated bad faith under Section 11(10)(ii), while due cause and honest concurrent use under Section 12 remained unestablished. The Court also cautioned that dissimilar goods, specialised purchasers and separate trade channels did not themselves exclude unfair advantage or detriment under Section 11(2). Actual confusion or likelihood of confusion is not an essential requirement of that provision.
Briefly, INEXO Cast Metal Solutions Pvt Ltd. appealed against the Trade Marks Registry’s refusal to register “FEDEXO” in Class 1 for foundry chemicals and related products. Its application claimed use since 5 September 2007. Federal Express Corporation opposed registration, arguing that FEDEXO was substantially similar to its earlier, well-known mark “FEDEX” and would unfairly benefit from its reputation despite the parties dealing in different goods and services. The appellant’s own correspondence, however, showed that it initially used “FEDEX” and changed it to “FEDEXO” only after an objection from Foseco International Limited in November 2009.
A Single Judge Bench of Dr. Justice A.D. Maria Clete found that FEDEXO incorporated FEDEX in its entirety, with only the letter “O” added. It held that the marks, viewed as a whole from the perspective of a purchaser of average intelligence and imperfect recollection, were substantially similar. The Court clarified that formal recognition of FEDEX as a well-known mark in February 2024 did not necessarily establish when it acquired that reputation. Evidence of its use, registrations, promotion, awards and enforcement sufficiently established that FEDEX was already well known in India before the appellant’s application on 26 November 2009.
The Court found that the appellant had not satisfactorily explained its adoption of FEDEXO or established its claimed use since 2007. Its repeated claims of earlier use contradicted its correspondence and invoices, and the unexplained material misstatements indicated bad faith under Section 11(10)(ii). The pleas of due cause and honest concurrent use under Section 12 therefore failed. Although the Registrar had misstated the date and recipient of the appellant’s letter and had inadequately examined Section 11(2), the Court independently reviewed the documentary record and found that those defects did not entitle the appellant to registration.
