The court ruled that the marks 'BundlePe' and 'LatePe' are not deceptively similar to 'PhonePe', as 'Pe' is a common term in the payment industry, and the plaintiff failed to establish distinctiveness or actual consumer confusion.

JUDGMENT :

The suit is filed under Sections 27, 28, 29, 134, and 135 of the Trade Marks Act, 1999. Since the matter involves the intellectual property rights of the plaintiff, it has been determined to be a commercial dispute and has been taken up for trial by the Commercial Division Court.

2. The plaintiff, PhonePe Private Limited, a company incorporated under the Companies Act, 1956, with its registered office in Mumbai and branch offices across various locations, including Chennai, has filed this suit seeking a declaration that the "PhonePe" mark is a well-known trademark under Section 2(1)(zg) read with Section 11 of the Trade Marks Act, 1999. The plaintiff also seeks an injunction against the defendants for alleged infringement of its trademark "PhonePe" and passing off, along with further reliefs.

3. The short facts of the plaint are as follows:-

3.1. The plaintiff, originally incorporated as FX Mart Private Limited, is a leading digital payments platform, having rebranded to PhonePe and launched its services in 2014. The company operates under authorizations granted by the Reserve Bank of India (RBI), initially received on 25.08.2014 for pre-paid payment instruments, with subsequent authorizations and renewals. The plaintiff offers various services, including UPI-based payments, bill payments, and e-commerce transactions, and has over 450 million registered users, holding a substantial market share in UPI transactions.

3.2. PhonePe claims ownership of the "PhonePe" trademark, coined by combining "Phone" with "Pe," where "Pe" is derived from the Hindi word meaning "on." The plaintiff asserts that this mark has been in use since September 2015, and it has registered the mark under several classes of the Trade Marks Act, 1999 , including Classes 9, 35, 36, 38, and 42, covering telecommunications, financial services, and e-commerce. In addition to the "PhonePe" mark, the plaintiff has also registered several phonetic variations, including "FonePe" and "PhonePay."

3.3. The plaintiff has made significant investments in building its brand and expanding its services across urban and rural India. It has promoted its brand through various marketing efforts, including celebrity endorsements by well-known figures like Aamir Khan and Alia Bhatt. The plaintiff’s brand has gained wide recognition and trust in the digital payments sector, currently processing approximately 48% of all UPI transactions in India.

3.4. In early 2023, the plaintiff discovered that the defendants, BundlePe Innovations Pvt Ltd, were using similar brand names, "BundlePe" and "LatePe," to offer competing payment services. The plaintiff alleges that the defendants are using these names to deceive consumers and create a false association with the "PhonePe" brand. The defendants are based in Kolkata, West Bengal, and are led by directors Mr.Prashanta Patra and Mr.Suman Kundu. The plaintiff asserts that the phonetic similarity of "BundlePe" and "LatePe" to "PhonePe" is likely to confuse customers, leading them to believe that the defendants' services are associated with or endorsed by the plaintiff.

3.5. The plaintiff contends that the defendants’ use of the marks "BundlePe" and "LatePe" is not only confusingly similar to the plaintiff's trademark but also highlights the “Pe” element in a manner that closely imitates the plaintiff’s brand. The plaintiff believes this imitation was done in bad faith, intending to take advantage of the reputation and goodwill associated with PhonePe.

3.6. In March 2023, the plaintiff issued a cease and desist notice to the defendants, demanding that they stop using the infringing marks and remove their applications from the Google Play Store, as well as deactivate the domain names bundlepe.com and latepe.in. However, the defendants did not comply with the notice and continued using the marks, de