Bombay High Court: In an application filed by PhonePe Private Limited (applicant) seeking interim relief, the Single-Judge Bench of Manish Pitale, J., dismissed the application on the grounds that the plaintiff failed to demonstrate a prime facie case that the defendant has copied the central, essential or fundamental features of the registered trademark of the plaintiff.
The plaintiff adopted the trademark ‘PhonePe’ in the year 2014 and applied for registration of ‘PhonePe’ and its variants before the Registrar of Trademarks. The plaintiff holds registration for the word mark ‘PhonePe’ and its variants including ‘पे’ written in Devanagari Hindi script dating back to March 2016. The plaintiff provides financial services to its clients through mobile phone applications like Unified Payment Interface (UPI), QR Codes, or through debit and credit cards. In the present suit, it is claimed that ‘PhonePe’ is a distinctive and coined trademark of the plaintiff and ‘पे’, when used as a colloquial term in Hindi, means ‘on’ and that is what signifies its use in the registered trademark of the plaintiff, for the reason that the services provided by the plaintiff are ‘on’ the mobile phone through an app.In 2019, the plaintiff initiated a suit before the Delhi High Court alleging that the defendant had infringed upon its trademark by using the mark “pe” in ‘BharatPe’. The application for interim reliefs was dismissed, which was later confirmed by the Division Bench of the Delhi High Court as a result of the withdrawal of the appeal and the suit stands pending. It is significant that in the said proceeding, the plaintiff claimed that ‘pe’ was a misspelling of ‘pay’, which indicated the fact that ‘pe’ was used in conjunction with ‘phone’ as a uniquely coined word in the registered trademark of the plaintiff.
Another suit was filed before Bombay High Court against the defendant for having used allegedly the infringing trademark ‘postpe’ which was thereby withdrawn. Interestingly, here the plaintiff was trying to claim some sort of exclusivity or distinctiveness in part of its mark i.e. ‘pe’.
Issues:
Issue 1: Whether the principle of ‘prosecution history estoppel’ was applicable in the present case?
The Court said that the plaintiff’s claim before the Registrar of Trademark (“registrar”) was relevant while deciding this matter. Plaintiff’s claim before the registrar was that its mark “Phonepe” when taken as a whole, cannot be said to be similar to marks like ‘Phone Pe Deal’, ‘Phone Pe Store’, ‘Phone Pe Crore’, etc. Further, the Court said that the plaintiff did not place this stand before the Court, which the registrar had observed that there were similar trademarks to ‘phone pe’, and this was a relevant factor to the controversy in the present case, for the reason that the trademark of the defendant was ‘Postpe’, which was similar to the marks pointed by the registrar.
Thus, the Court opined that by not placing its own stand taken before the Court, the plaintiff disentitled itself from grant of discretionary reliefs under Order XXXIX, Rules 1 and 2 of Civil Procedure Code (“CPC”). Further, the Court said that prejudice was certainly caused to the defendant, and the principle of prosecution history estoppel was correctly applicable in the present case. Therefore, the Court said that the plaintiff cannot successfully claim discretionary reliefs in the backdrop of such conduct.
Issue 2: Whether the earlier legal proceedings effect the matter at hand?
The Court said that the earlier two legal proceedings between the parties were relevant and that the effect of the same must be taken into consideration by the Court to examine whether the plaintiff has been shifting its stand and to what extent it effects the grant or refusal of discretionary relief at an interlocutory stage.
The Court said that by taking completely contrary stands in respect of its own registered trademark ‘Phonepe’ in different legal proceedings, the plaintiff had disentitled itself from the grant of interim reliefs. The Court pointed out that the plaintiff endeavored to claim before the Court that ‘pe’ connotes ‘payment’ but in its registered trademark, it refers to the colloquial Hindi term ‘on’. It was clearly established that trademark ‘postpe’ is a short form of ‘postponed payment’. Thus, the Court stated that the plaintiff’s stands were mutually inconsistent with each other, and such contrary pleas had disentitled the plaintiff from the grant of discretionary reliefs under Order XXXIX, Rules 1 and 2 of CPC.
The Court affirmed the findings of the Delhi High Court in the earlier suit and noted, that whether the claim of the plaintiff’s suffix ‘pe’ had acquired distinctiveness and secondary meaning to the extent that the consuming public now invariably associated the mark with only the services provided by the plaintiff, is a matter for trial. Thus, when the remaining parts of the marks i.e., ‘phone’ and ‘post’ were compared, the Court did not find a prima facie case made out by the plaintiff about the similarity between the two. The Court said that “the words, ‘phone’ and ‘post’ have distinct dictionary meanings with no possibility of confusion between the two. The Court did not find phonetic similarity between the two marks, for the plaintiff to claim that a strong prima facie case was made out to grant interim relief”.
Thus, the Court said that plaintiff’s case cannot be taken any further for grant of interim relief, as it failed to establish a prima facie case that the defendant had copied the central, essential or fundamental features of the registered trademark of the plaintiff.
Therefore, the application for interim relief was dismissed.
[PhonePe Private Limited v. Resilient Innovations Private Limited; 2023 SCC OnLine Bom 764, decided on 06-04-2023]
Advocates who appeared in this case :
For the plaintiff: Senior Advocate Ravi Kadam, Senior Advocate Venkatesh Dhond, Advocate Rohan Kadam, Advocate Thomas George, Advocate Tanvi Sinha, Advocate Navankur Pathak, Advocate Neeti Nihal;
For the defendant: Senior Advocate Sharan Jagtiani, Advocate Nishad Kulkarni, Advocate Mohit Goel, Advocate Siddhant Goel, Advocate Aasif Navodia, Advocate Khushboo Jhunjhunwala, Advocate Abhishek Kotnala, Advocate Aditya Goel, Advocate Deepankar Mishra.
Also Read:
Explained: PhonePe v. BharatPe Trade Mark Dispute — “Pe”/Pay-as-you-go
