Bombay High Court Refuses Interim Relief To PhonePe In Trademark Infringement Suit, Says Contradictory Stands Taken On Meaning Of ‘Pe’

Justice Manish Pitale cited contradictions between PhonePe’s stand taken before the Delhi High Court and the Bombay High Court regarding the meaning of the term “Pe”.

“It appears that the endeavour of the plaintiff is to claim that, 'pe' may connote 'payment' but, in its registered trademark, it refers to the colloquial Hindi term 'on', thereby further alleging that the defendant by using 'pe' has sought to come as close as possible to the registered trademark of the plaintiff. The clear contradiction in the stands taken by the plaintiff in respect of its own registered trademark in different legal proceedings, shows that it has tried to obtain interim reliefs by shifting its stands, which appear to be mutually inconsistent”, the court opined.

PhonePe Private Ltd. in the present case claimed that the suffix “Pe” after the word “Phone” in its trademark has the colloquial Hindi meaning “On”. Therefore, PhonePe means services on the phone, it said.

However, in a 2019 suit pending before the Delhi High Court for alleged infringement of “PhonePe” through defendant’s mark “BharatPe”, the plaintiff has claimed that the term “Pe” means the action of payment and it was a misspelling of the word “Pay”.

“Such contrary pleas do indicate that the plaintiff has dis-entitled itself for grant of discretionary reliefs under Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC),” the court said.

According to the Plaintiff, it adopted the mark in 2014 and got the registration for “PhonePe” and its variants including ‘पे’ written in Devanagari script dating back to March 2016.

The plaintiff filed opposition proceedings before the trademark registrar for registration of defendant’s “postpe” and an infringement suit before the high court.

The high court in 2021 allowed the plaintiff to withdraw its suit with the conditional liberty that it can file a fresh suit restricting its claim to the mark “PhonePe” taken as a whole. Thus, the plaintiff filed the present suit.

The court agreed with Delhi HC’s finding that the plaintiff cannot claim exclusivity in respect of “Pe” which is a part of its registered trademark “PhonePe”.

In the present case, the plaintiff claimed that “PhonePe” is a distinctive and coined trademark and the term “pe” has become synonymous with its business.

The defendant claimed that “postpe” is coined from the concept of postponed payment meaning “buy now and pay later” and is distinct from the plaintiff’s UPI service under “PhonePe”.

The high court said that that the plaintiff is shifting its stands regarding the meaning of “Pe” and hence it is not entitled to discretionary relief.

The trademark registrar in its examination report for PhonePe had noted the existence of similar trademarks such as “phone pe deal”, “phone pe store” etc. The plaintiff had said that these marks were not similar to PhonePe as it was distinct when taken as a whole.

The court said that this was a relevant factor in the present case and the plaintiff suppressed the stand it took before the trademark registrar in the present case.

The court held that “Pe” being used to mean “Pay” in the services provided by the parties is common and widely used. It held that whether “Pe” has acquired distinctiveness and secondary meaning to the extent that it is only associated with the plaintiff's services is a matter of trial.

The court did not find any prima facie similarity between “Phone” and “post” – the remaining parts of the rival marks.

The court disagreed with the plaintiff's claim that gullible, uneducated or even educated customers would be confused between the services of the parties.

The court further held that goodwill and prior use in itself is not sufficient for interim relief for passing off action, as the plaintiff failed to make out a prima facie case that the defendant has copied the central, essential, or fundamental features of its registered trademark.

Senior Advocates Ravi Kadam and Venkatesh Dhond with Advocates Rohan Kadam, Thomas George, Tanvi Sinha, Navankur Pathak, Neeti Nihal i/b. Saikrishna & Associates represented the Plaintiff.

Senior Advocate Sharan Jagtiani with Advocates Nishad Nadkarni, Mohit Goel, Siddhant Goel, Aasif Navodia, Khushboo Jhunjhunwala, Abhishek Kotnala, Aditya Goel and Deepankar Mishra i/b. Khaitan & Co. represented the Defendant.

Case no. – Interim Application (L) No.25032 Of 2021

Case Title – PhonePe Private Limited v. Resilient Innovations Private Limited

Citation: 2023 LiveLaw (Bom) 182