Reputation, Not Listing, Decides: Madras High Court Refuses FEDEXO in Favour of FEDEX

Introduction:

Can a company take a famous brand, add one letter at the end, and call the result its own? On 15 October 2026, the Madras High Court in INEXO Cast Metal Solutions Pvt. Ltd. v. Federal Express Corporation & Anr., has refused to register “FEDEXO”, a mark for foundry chemicals, because it sits too close to “FEDEX”, the well-known mark of the courier company Federal Express Corporation.

INEXO, the applicant, argued that FEDEX was added to the Registry’s list of well-known marks only in 2024, long after INEXO applied in 2009. The Court did not accept that this settled anything. It asked a plainer question: Was FEDEX already well known when INEXO applied?

Facts:

• INEXO, the applicant makes foundry materials such as exothermic sleeves and coating agents. On 26 November 2009 it applied to register FEDEXO in Class 1, claiming use since 5 September 2007. The Registry’s 2010 examination report cited only an unrelated mark, FEDEX500, and no FedEx mark.
• FedEx opposed the application in 2013. FedEx pointed to its use of FEDEX in India since 1984, its Indian registrations from 1986 and its well-known status. It argued that FEDEXO was simply FEDEX with an “O” added. INEXO replied that it had put the name together from “FED” (for feeder) and “EXO” (from its trading name), and had used it honestly since 2007. It asked for registration under Section 12 of the Trade Marks Act, 1999, which allows registration in cases of honest concurrent use.
• INEXO’s papers, however, did not match this account. Its affidavit admitted that it first used FEDEX in 2007. After another company, Foseco International, objected in November 2009, INEXO agreed to change FEDEX to FEDEXO. The letter agreeing to the change is dated 28 November 2009, two days after INEXO filed its application claiming use since 2007. Its invoices say FEDEX until March 2010, and the first invoice mentioning FEDEXO is dated 13 May 2010.
• On 21 October 2024, the Assistant Registrar refused the mark, relying largely on FEDEX’s place on the Registry’s list of well-known marks (added in February 2024). INEXO appealed under Section 91.

Issues:

The Court framed the following five points for determination:

1. Whether the mark “FEDEXO” is identical with or similar to the mark “FEDEX”.
2. Was FEDEX already well known in India on 26 November 2009, the date INEXO applied, even though it was formally listed only in February 2024?
3. Was INEXO’s adoption of the mark honest, or was it tainted by bad faith?
4. Does it matter that the goods are different? In other words, would FEDEXO take unfair advantage of FEDEX’s reputation or weaken it?
5. Do INEXO’s other points help it: no proven confusion, no infringement suit, and no objection to FEDEX at the examination stage?

Arguments

Appellant:

• FEDEXO is visually and phonetically distinct from FEDEX and must be compared as a whole.
• The goods, customers and trade channels are entirely different: foundry materials against courier services.
• FEDEX was recognised as well known only in February 2024, and that later status cannot defeat an honest adoption in 2007 or 2009, relying on Paragon Polymer Products v. Sumar Chand Nahar.
• The Registrar relied only on the listing, did not test the conditions of Section 11(2), and misread the Foseco letter.
• There was no confusion and no infringement action in over twelve years.

Respondent:

• The respondent contended that a well-known mark is protected across classes, and Section 11(2) works against dilution even without actual confusion.
• A mark is well known because of its reputation, not because it appears on a list. Explanation (b) to Section 11 and Lego Juris v. Gurumukh Singh support this.
• Its 2013 evidence proved its reputation well before 2009: Indian registrations from 1986, foreign decisions from 1991 to 2007, Reader’s Digest Asia Trusted Brands awards from 2004, and very large worldwide revenue.
• INEXO’s own documents showed bad faith. FEDEX came first, FEDEXO appeared only after the Foseco objection, there was no invoice for FEDEXO before May 2010, and INEXO had given two different explanations for “EXO”.
• Paragon Polymer and Nandhini Deluxe were different cases, involving an ordinary dictionary word and a common word, and neither involved a well-known mark.

Ratio:

1. Section 11(2) of the Trade Marks Act gives famous brands special protection. A mark similar to a well-known mark can be refused even for completely different goods if two things are true: the earlier mark is well known in India, and using the new mark, without a good reason, would take unfair advantage of its reputation or damage its distinctive character. Both must be shown. In an opposition, the applicant must satisfy the Registrar that its mark deserves registration.
2. The Court noted that the Registrar had made mistakes. He had misdated INEXO’s letter to Foseco and treated it as addressed to FedEx. He had also gone straight from FEDEX’s place on the list to refusal, without checking the evidence or the second condition of Section 11(2). The Court held that these errors did not entitle INEXO to registration. The evidence was documentary, fully argued and already on record, so the Court examined it afresh.
3. The Court observed that FEDEXO contains the whole of FEDEX plus one extra letter. The Court applied the usual test, which asks how the marks strike an ordinary buyer of average intelligence who remembers a brand only imperfectly. By that test, the marks are substantially similar. INEXO’s Managing Director had himself called the change “insignificant”, which did not help its case.
4. The Court held that the date a mark is placed on the list does not decide when it became famous. A listing records a reputation; it does not create one. The real question was whether FEDEX was well known on 26 November 2009, when INEXO applied. The evidence showed that it was: use in India since 1984, registrations from 1986, wide advertising, survey-based awards from 2004, very large worldwide turnover, and foreign decisions from 1991 to 2007. The 2024 listing only confirmed this. The Court also said the Registrar was not applying the listing backwards, because Sections 11(8) and 11(10) required him to protect a well-known mark when he decided the case in 2024. Paragon Polymer did not help INEXO, because INEXO had not proved honest earlier use of FEDEXO.
5. The Court found that it was not. INEXO started with FEDEX and changed to FEDEXO only after Foseco objected. It also explained the “EXO” part in two different ways. Most seriously, it claimed use of FEDEXO since 2007 in its application, affidavits, pleadings and accountant’s certificate, yet its invoices show FEDEXO only from May 2010, and its appeal papers admitted that the mark was adopted in 2009. The Court treated these wrong statements as signs of bad faith under Section 11(10)(ii). That ended both INEXO’s claim of a good reason for choosing the mark and its plea of honest concurrent use under Section 12.
6. The Court said different goods are no defence under Section 11(2), because the provision exists for exactly that situation. The comparison is made on the goods listed in the application, not just on what the applicant sells today. Given FEDEX’s reputation, the near-identical mark and the lack of a good reason for choosing it, using FEDEXO would take advantage of FEDEX’s goodwill and weaken its link with FedEx. It made no difference that INEXO’s customers are industrial buyers who purchase through different channels.
7. The Court said proof of actual confusion is unnecessary, and Section 11(2) does not depend on confusion at all. FedEx’s decision not to sue gave INEXO no right to registration, for the opposition had been pending since 2013. An examination report that omits a mark does not bar an opposition, and neither FEDEX500 nor Section 29(4) advanced INEXO’s case.

Judgment

Dr.Justice A.D.Maria Clete dismissed the appeal and upheld the Registrar’s order of 21 October 2024 refusing FEDEXO. The Court also directed that the Registrar’s reference to the letter dated 28.11.2011 be read as the letter dated 28.11.2009 to Foseco. The Court made clear that its findings go only to INEXO’s right to registration and decide nothing on infringement or passing off. There was no order as to costs.

Why this matters

For applicants, claim only the date of use your invoices can prove. INEXO lost much of its credibility, and with it the Section 12 argument, over a user date that its own papers contradicted.

For brand owners, the listing helps, but it is the evidence that decides. FedEx won on material that pre-dated the application: registrations, advertising, awards, turnover and foreign decisions. Keep that record in order, and watch the Journal. An opposition filed in 2013 was still doing its work in 2026.

The Court’s finding of unfair advantage is brief. It rests mainly on FEDEX’s reputation, the near-identical marks and the lack of a good reason for the choice. A future case in which the applicant explains its adoption better may test how far that reasoning goes. Here, INEXO’s records left it little room to argue.

A well-known mark is protected for what it has earned in the market. A one-letter change, followed by an unreliable account of one’s own history, is not a safe route to the register.

-Priyanka Dey, Associate, Ductus