IP Law

In a landmark victory for global branding, the Bombay High Court has ordered a group of Mumbai-based financial companies to stop using the name “FEDEX.” Justice Riyaz Chagla delivered a stinging blow to the defendants, ruling that their use of the mark constitutes blatant trademark infringement, passing off, and brand dilution.
The court granted sweeping interim relief to the US-based Federal Express Corporation. This decision forces Fedex Securities Private Limited, Fedex Stock Broking Limited, and Fedex Finance Private Limited to strip the iconic name from their corporate identities.
A Decisive Legal Strike
The court found that the global logistics giant holds exclusive rights to the “FEDEX” name. The judge rejected the defendants’ claims of honest adoption. He described their defense as an “afterthought.”
The ruling bars the three companies from using “FEDEX” or any similar mark as:

• A Corporate or Trading Name
• A Service Mark or Trademark
• A Domain Name or Email Identity
• Branding on Business Papers and Advertising
  The “Well-Known” Powerhouse
  A major pillar of the case was the 2024 declaration by the Trade Marks Registry, which officially recognized “FEDEX” as a well-known mark in India. This elite status gives the brand extraordinary protection. It prevents other businesses from using the name, even if they operate in completely different industries like finance or stockbroking.
  Justice Chagla emphasized that “FEDEX” is a “household word.” The court ruled that the defendants’ use of the name was “bound to deceive” the public. Most people would naturally assume these financial firms were subsidiaries or sister concerns of the global courier giant.
  Fact-Checking the Defense
  The Mumbai firms claimed they had used the name since the mid-1990s. They tried to hide behind Section 159(5) of the Trade Marks Act, 1999, which protects certain “prior uses” of names.
  The court shredded this argument. The judge noted that Federal Express Corporation registered the “FEDEX” mark for financial services (Class 36) after the 1999 Act came into force. Therefore, any continued use by the defendants after that registration constitutes fresh infringement every single day.
  | Feature | Federal Express Corporation | Fedex Securities / Stock Broking |
  |—|—|—|
  | Industry | Global Logistics & Business Services | Financial Services & Stock Broking |
  | Recognition | Certified “Well-Known” Mark (2024) | Claimed “Prior Use” from mid-1990s |
  | Court Ruling | Exclusive rights upheld | Ordered to cease and desist |
  | Risk Factor | Brand dilution and confusion | Dishonest adoption and “passing off” |
  The Cost of “Dishonest Adoption”
  The court looked closely at how the Mumbai firms chose the name. One defendant claimed they used “FEDEX” because their directors were former executives of Federal Bank.
  The judge called this explanation “implausible.” He noted that only one director had any link to Federal Bank. Furthermore, this reason never appeared in official records when the firms changed their names years ago. The court concluded the adoption was a calculated move to piggyback on a global reputation.
  Impact on the Financial Sector
  This ruling sends a shockwave through the Indian business landscape. It warns local companies that they cannot hide behind “different sectors” to use famous global names.
  Legal experts suggest the ruling reinforces three critical points:
• Identity Matters: Adding a generic word like “Securities” to a famous brand does not make a new name distinctive.
• Dilution is Real: Using a famous name for unrelated services hurts the original brand’s “selling power.”
• No Safety in Delay: Even if a company has used a name for decades, a “well-known” status can still trigger a legal shutdown.
  What Happens Next?
  The Bombay High Court has granted a six-week stay on the order. This gives the defendants a narrow window to:
• Appeal the decision to a higher bench.
• Begin the process of rebranding and renaming their entire corporate infrastructure.
  If they fail to act, they face severe legal consequences for defying a court injunction. For now, the global giant has secured its territory in the Indian market.

The Bombay High Court has refused to grant interim relief to the Chinese cuisine restaurant House of Mandarin in a trademark dispute involving the use of the acronym “HOM.” The court ruled that the restaurant failed to establish a strong prima facie case of trademark infringement or passing off. The decision highlights the strict legal standards applied in intellectual property disputes, especially those involving abbreviations and acronyms.

Justice Sharmila U. Deshmukh, who heard the matter, delivered the order on December 19, 2025. The judge held that House of Mandarin did not provide sufficient evidence to show that “HOM” had acquired a distinctive identity exclusively linked to its business. As a result, the court declined to restrain the rival restaurant from using the acronym at this stage.

Background of the Dispute

House of Mandarin operates as a Chinese restaurant in Mumbai and has built a presence in the city’s competitive food and beverage market. The restaurant filed a civil suit alleging trademark infringement and passing off against another restaurant that used the acronym “HOM” in its branding.

The plaintiff argued that customers, food critics, and regular patrons commonly refer to House of Mandarin as “HOM.” It claimed that the acronym had become a shorthand identifier of its brand. According to the restaurant, the rival’s use of the same acronym created confusion among consumers and diluted its goodwill.

The restaurant therefore sought an interim injunction. It asked the court to immediately restrain the defendant from using “HOM” until the final disposal of the suit.

Court’s Assessment of the Claim

The Bombay High Court carefully examined whether the plaintiff met the legal requirements for interim relief. Under trademark law, a party seeking such relief must prove three elements. These include a strong prima facie case, the likelihood of irreparable harm, and a balance of convenience in its favor.

Justice Deshmukh found that House of Mandarin failed at the very first stage.

The court observed that the restaurant did not establish that “HOM” had acquired an independent and distinctive reputation in the market. While the acronym may be used informally, the judge noted that informal references alone do not automatically create trademark rights.

The court also examined how the restaurant presents itself commercially. It observed that on popular food delivery platforms and menus, the business appears prominently under its full name, House of Mandarin. The acronym “HOM” does not function as the primary public-facing identifier of the restaurant.

This weakened the claim that consumers strongly associate “HOM” with the plaintiff alone.

Failure to Prove Consumer Confusion

A key element in trademark infringement and passing off cases is consumer confusion. The court stressed that the plaintiff must show that an average consumer is likely to be misled into believing that the rival’s business is connected with the plaintiff.

In this case, the court found no convincing evidence of such confusion.

The judge noted that restaurants typically attract informed customers who make deliberate choices. Dining decisions often involve reviewing menus, locations, prices, and brand identities. In such circumstances, the likelihood of confusion based solely on an acronym becomes lower.

The plaintiff did not present consumer surveys, complaints, or documented instances of mistaken identity. In the absence of such material, the court said it could not presume confusion.

Passing Off Claim Not Established

The court also examined the claim of passing off. To succeed in a passing off action, a plaintiff must prove goodwill, misrepresentation, and damage.

Justice Deshmukh acknowledged that House of Mandarin may enjoy goodwill under its full name. However, she clarified that goodwill in a full brand name does not automatically extend to an abbreviation unless the abbreviation has independently acquired recognition.

The court found no evidence to show that the rival restaurant misrepresented its services as being associated with House of Mandarin. There was also no material to demonstrate actual or imminent damage to the plaintiff’s business.

As a result, the passing off claim did not justify interim protection.

Defendant’s Position

The defendant restaurant argued that it used “HOM” independently and legitimately. It denied any intention to exploit the reputation of House of Mandarin. The defendant maintained that its branding, presentation, and customer base were distinct.

At the interim stage, the court accepted that the defendant’s use did not appear deceptive on the face of the record. The judge stated that these issues would require deeper examination during trial.

Legal Threshold for Interim Injunctions

The High Court reiterated that interim injunctions are extraordinary remedies. Courts must exercise caution before restraining a business from operating under its chosen name.

Justice Deshmukh emphasized that trademark rights over abbreviations demand strong proof. A party must demonstrate long, consistent, and prominent use of the acronym as a standalone brand. Without this, courts are unlikely to grant immediate relief.

The judge clarified that the refusal of interim relief does not decide the final rights of the parties. It only reflects the court’s view that the plaintiff did not meet the high threshold required at this early stage.

What the Ruling Means

With this order, House of Mandarin cannot prevent the rival restaurant from using “HOM” for now. The main suit will continue, and both sides will have the opportunity to present detailed evidence during trial.

The ruling sends an important message to businesses. It underscores that abbreviations and short forms are not automatically protected under trademark law. Brand owners must actively establish distinctiveness and consumer association if they wish to claim exclusive rights over acronyms.

Legal experts believe the judgment could influence future trademark disputes in the hospitality sector. Restaurants often rely on catchy abbreviations and nicknames. This ruling makes it clear that courts will demand concrete proof before recognizing such claims.

Next Steps in the Case

The case will now proceed to the evidence stage. House of Mandarin may attempt to strengthen its position by submitting additional material. This could include advertising records, media references, customer testimonials, or survey evidence.

The final outcome will depend on whether the restaurant can demonstrate that “HOM” has become a distinctive badge of origin linked solely to its business.

Until then, the Bombay High Court’s order stands as a reminder. Trademark protection depends not on intention or belief, but on proof, perception, and public association.