The Delhi High Court has rejected “PhonePe’s” plea to issue an interim injunction order against “BharatPe” for using similar and identical suffix “Pe” in its name by remarking that its mark was not in violation of the trademark held by “PhonePe” in the case of PhonePe v. Ezy Services & Ors
By: Surbhi Kumari, Amity University, Patna.
The plaintiff and the defendants provide online payment services via their Applications. However, the defendants’ services are available only to merchants, while the plaintiff’s services are available to anyone who downloads the App.
The plaintiff and the defendants use the marks “PhonePe” and “BharatPe” respectively. The plaintiff claims that the mark used by the defendants, as well as the use of the word “BharatPe” itself, violates the plaintiff’s registered trademark. The plaintiff has sued the defendants, for permanent injunction, against use of the suffix “Pe”, by the defendants.
The judgment was passed by a Single Judge Bench of Justice C Hari Shankar, who directed “BharatPe” to maintain accounts of the amounts earned as a result of the use of the mark and to file half-yearly audited statements.
The judgement passed earlier this month stated that parties cannot misspell descriptive/generic words to claim exclusivity unless there is evidence of such misspelling achieving secondary meaning.
Senior Advocate Jayant Mehta appeared for PhonePe & Senior Advocate Gaurav Pachnanda appeared for Bharatpe.
PhonePe argued that the said trademark and its variations, in English and Devanagari, both, were coined and adopted since 2015 and have been used by the plaintiff regularly. Further , it was argued that “Pe ” was an essential, ruling and distinguishing feature of the registered trademarks & it is an “invented word” not to be found in the English dictionary.
The plaintiff asserted that a consumer of average intelligence and imperfect recollection, on seeing the defendants’ mark “BharatPe”, would notice the “Pe” suffix and associate the services of the defendant with that of the plaintiff. The registration by the plaintiff was over the entire word “PhonePe” and the same cannot be cut up, PhonePe also submitted that no justification for retaining “Pe” was given by BharatPe and that they have copied all marked and essential features of “PhonePe” thus causing confusion in public to believe an association between two.
The defendant argued that two marks- PhonePe and BharatPe were visually, orally and structurally different.
The defendant claimed that the BhartPe mark was being used since 2016, adding that the idea behind the mark was to build a single QR code for merchants to facilitate making payments across all consumer UPI-based applications, and hence the tagline, “Bharat Pe Sab Chalta Hai”.
It was also argued that the suffix “Pe” was merely a misspelling of the word “Pay” and no exclusive rights could be enforced in respect of such a word, unless it has acquired a secondary meaning with respect to the plaintiff’s business.
However, Justice Shankar held that this claim was insufficient to prove that BharatPe’s logo is deceptively similar to PhonePe’s. He observed that “It does not appear, at a plain glance, that the colouring of the letters in the two marks, or their font, is the same.”
Relying on several past judgements by SC and the Delhi High Court,
Justice Shankar held that a registered trademark cannot be “shifted” and exclusively claimed, barring a few exceptions which didn’t apply to this case.
The order also noted that there is a difference between the services provided by PhonePe and BharatPe. While the former provides a UPI-based payment portal, the latter provides a single QR code which can be used by all consumer UPI-based applications including PhonePe.
The Court stated that “PhonePe” and “BharatPe” were both composite marks, and the two marks were not similar and the plaintiff cannot claim difference only over the “Pe” suffix as no infringement can be claimed on the basis of part of a registered trademark.
Accordingly, the Court dismissed the application for interim injunction against the defendant, opining that no case for the same was made out.