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IN THE HIGH COURT OF DELHI
C. Hari Shankar, J.
Phonepe Private Limited - Appellant
Versus
Ezy Services - Respondent
IA 8084 of 2019 in CS(COMM) 292 of 2019
Decided On : 15-04-2021
| Table of Content |
|---|
| 1. infringement of trademarks and passing off is alleged. (Para 1 , 2 , 3) |
| 2. rival parties' arguments and contentions presented. (Para 4 , 5 , 6) |
| 3. court's analysis on the likelihood of confusion in trademarks. (Para 9 , 10 , 11 , 18) |
| 4. rules on distinctiveness and secondary meaning in trademark law. (Para 21 , 22 , 26) |
| 5. final ruling dismissing the plaintiff's request for injunction. (Para 71 , 72 , 73 , 74) |
JUDGMENT
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', 
, 
or 
, 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:
| Sl. No. | Trademark | Goods/services | Class | |
| 1. | Phonepe, , , , | Communications and telecommunications services for electronic bill payment systems; leasing access time to web-sites for electronic bill payment system; Telecommunications services, namely the electronic transmission of data and information, paging services, providing an online, interactive bulletin board for the transmission of messages among computer user concerning trading, and the purchase and sale of items via a global computer network; data streaming; transmission of videos; videotext services; | 38 | |
| 2. | | Computer software for online payment; Computer software to allow users to perform electronic business transactions via a global computer network; computer software for receiving | storing, editing, and transmitting purchase information over a computer network; computer software to log commercial transactions; Mobile applications for online transactions; Computer software for processing electronic payments and for transferring funds to and from others; authentication software for controlling access to and communications with computers and computer networks; magnetically encoded credit cards and payment cards: | 35 |
| 3. | | Financial services, namely, electronic funds transfer: clearing and reconciling financial transactions; providing a wide variety of payment and financial services, namely, credit card services. Issuing credit cards and lines of credit, ele | ||
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The plaintiff must satisfy all the ingredients for claiming temporary injunction, including prima facie case, irreparable loss, and balance of convenience. The plaintiff's stand before different cour....
Distinctiveness in trademark law must be assessed concerning the goods or services; common terms can acquire distinctiveness based on usage, thus allowing for a prima facie case of infringement.
The court found that despite phonetic similarity, the distinctiveness of trade marks and differences in intended consumer bases negate the likelihood of confusion and passing off.
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 distinctivenes....
Generic and descriptive terms in trademarks cannot be exclusively claimed, and likelihood of confusion must be assessed holistically from the average consumer's perspective.
The court emphasized likelihood of consumer confusion in trademark law, holding that similar marks can infringe established trademarks regardless of differences in service or field, thus supporting t....
The court established that the rights of the prior user of a trademark are superior to those of a subsequent user, emphasizing the elements of goodwill, misrepresentation, and damage in passing off c....
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