The Single Bench of the Bombay High Court (the “Court”) on 06 April 2023 in PhonePe Private Limited vs. Resilient Innovations Private Limited, Interim Application (L) No. 25032 Of 2021 in Commercial IP Suit No. 160 of 2022, in relation to “PhonePe vis-à-vis postpe” did not grant any interim relief as the Plaintiff failed to make out a prima facie case that the Defendant has copied the central, essential or fundamental features of the Plaintiff’s registered trade mark.
· The Plaintiff and the Defendant have had previous disputes in relation to the use of ‘पे’ (written in Devanagari Hindi script) as well as the word “PE”.
· Suit filed in Delhi High Court in relation to “PhonePe vis-à-vis BharatPe” wherein also the Plaintiff was not granted any interim relief and the suit is still pending in the Delhi High Court.
· The different arguments and submissions in relation to the adoption and use of the Plaintiff’s “PE” in Delhi High Court and the earlier suit filed in the Bombay High Court; backfired on the Plaintiff’s fresh application for the interim relief again in the Bombay High Court.
Observations by the Court
· The Defendant is justified in indicating that the said earlier two legal proceedings between the parties are relevant and that the effect of the same can be taken into consideration by this Court to examine as to whether the Plaintiff has indeed been shifting its stands and as to what effect the same can have on grant or refusal of discretionary relief at interlocutory stage.
· In the earlier proceedings, the Plaintiff while analyzing its own registered trade mark ‘PhonePe’; specifically claimed that ‘pe’ was used instead of the word ‘pay’ signifying payment and that ‘pay’ was misspelt as ‘pe’ in order to indicate that ‘PhonePe’ was a unique and coined word of the Plaintiff.
· Contrary to the submissions in the earlier proceedings; the Plaintiff in the fresh suit in the Bombay High Court submitted that the word “Pe” is not a dictionary word and in colloquial language “Pe” refers to the Hindi word ‘पे which means “on” and thereby the Plaintiff intended to indicate that one can do it on the phone i.e., the medium. In other words, PhonePe writes it as “Pe”, thereby evoking the Hindi connotation of the term, making “PhonePe” sound as “on the phone”, which is apt as PhonePe is an app that operates through mobile phones.
· The Court observed that by taking such completely contrary stands in respect of its own registered trade mark ‘PhonePe’ and its analysis, the Plaintiff has dis-entitled itself for grant of interim reliefs.
· The Court while disentitling the interim reliefs to the Plaintiff also applied the principle of prosecution history estoppel as the Plaintiff in its responses to the examination reports had relied upon the principle of trade mark as a whole in relation to the cited trade marks of ‘Phone Pe Deal‘, ‘Phone Pe Store‘, ‘Phone Pe Crore‘, ‘pe‘, ‘pay‘, etc.
[Note – The application for the interim relief was only disentitled and whether the Plaintiff’s “PE” has acquired distinctiveness is a matter of trial in both the Courts.]
The present case highlights the importance of having an effective intellectual property strategy from the inception as the journey from a trade mark to a brand is indeed an arduous task.
The following may be considered for a robust strategy:
· To understand the adoption of a trade mark which includes how a trade mark was originally conceived;
· Consistency of submissions in relation to any objections by the Trade Marks Registry and/or oppositions by any third parties;
· An effective repository of prosecution history to avoid blowing hot and cold at the same time;
· Regular intellectual property audits with the legal (includes in-house as well as outside counsels) and marketing team to maintain alignment with the strategies.
Author: Nitin Abhishek