JUDGMENT

C. Hari Shankar, J. - I.A. 8084/2019 in CS(COMM) 292/2019

1. The plaintiff and the defendants provide online payment services via their Applications ("Apps", in short). By downloading the Applications, it is possible to effect payments using the services of the plaintiff/defendants, across the internet. The defendants' services are available exclusively to merchants, whereas the plaintiff's services are available to anyone who downloads the App.

2. The plaintiff and the defendants use the marks "PhonePe" and "BharatPe" respectively. The plaintiff alleges that the mark used by the defendants, as well as the use of the word "BharatPe" itself, infringes the plaintiff's registered trademark and also amounts to passing off, by the defendants, of the services provided by them as those of the plaintiff.

3. Accordingly, the plaintiff has sued the defendants, for permanent injunction, against use, by the defendants, of 'Pe' or any deceptive variant of 'PhonePe' which is identical and/or similar to the plaintiff's trademarks 'PhonePe',, in respect of payment services or in any other manner amounting to infringement of the plaintiff's trademark, or of passing off, by the defendants, of their services as those of the plaintiff.

4. Summons have been issued in the suit, which is pending. Detailed arguments were advanced on IA 8084/2019, filed by the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, by Mr. Jayant Mehta, learned Senior Counsel on behalf of the plaintiff and Mr. Gaurav Pachnanda, learned Senior Counsel for the defendants. This order disposes of the said application.

Rival contentions

5. Instead of separately setting out the facts, it would be advantageous to straightway enumerate the rival contentions of learned Senior Counsel for the parties, as the facts would become apparent therefrom.

6. Mr. Jayant Mehta, learned Senior Counsel for the plaintiff, submitted as under:

(i) The plaintiff has registrations, in its favour, of the marks PhonePe,, and with effect from 29th March, 2016, 5th April, 2016 and 2nd December, 2016 in respect of the following goods in the following classes:

(ii) The documents on record indicate that the plaintiff's App has been downloaded over ten crore times.

(iii) The aforesaid trademarks PhonePe and its variations, whether in English or in Devanagari, have been coined and adopted by the plaintiff since 2015 and have been used by the plaintiff regularly since then.

(iv) The transliteration of the Devanagari "" as "Pe" is an innovative and fanciful adaptation by the plaintiff as, otherwise, " " would be translated as "Pay". Similarly, "Pe" would be otherwise amenable to being pronounced similar to "be" or "me", and not as one would pronounce " ". It is the plaintiff who has popularised "Pe" as " ".

(v) "Pe" is an essential, dominant and distinguishing feature of the plaintiff's registered trademarks.

(vi) The plaintiff is the prior user of the trademarks employing the said distinguishing feature, in respect of which the plaintiff has earned substantial goodwill and reputation.

(vii) "Pe" is an invented word, not to be found in the English dictionary. It has no obvious meaning.

(viii) As such, when combined with "Phone", which is an ordinary dictionary word with a well known meaning, "Pe" becomes the dominant and essential feature of the plaintiff's trademark "PhonePe".

(ix) A large volume of material has been placed on record, including articles, advertisements, evidence of tieups/partnerships with others across various sectors/industries, involvement in public activities such as the VIVO IPL-2019 and endorsement by celebrities, as evidence of the reputation and goodwill amassed by the plaintiff over the years.

(x) As a result thereof, the plaintiff's "PhonePe" App has become the preferred App for making online payments. The plaintiff has filed data of the number of transactions effected using the plaintiff's App in 2015-16, 2016-17, 2017-18 and 2018-19 as well as the amounts earn