No infringement can be claimed on the basis of part of a registered trademark
In the case of Phonepe Private Limited Vs. Ezy Services And Another, plaintiff owner of "PhonePe" was seeking an interim injunction against the defendant, owner of "BharatPe" on the ground of deceptive similarity between both. Except "Pe" suffix, there is no other confusing similarity between "PhonePe" and "BharatPe"
Delhi High Court categorically held that "PhonePe" and "BharatPe" are both composite marks. Ordinarily, therefore, these marks cannot be dissected into "Phone" and "Pe" in the case of the plaintiff and "Bharat" and "Pe" in the case of the defendants. The plaintiff cannot claim exclusivity solely over the "Pe" suffix, as no infringement can be claimed based on part of a registered trademark.
As quoted by Justice C.Hari Shankar, in the present case “There may be substantial, however, in the claim of the plaintiff that the "Pe" suffix constitutes the dominant part of the essential feature of the "PhonePe" and "BharatPe" marks, especially as the suffix "Pe" is written with a capital "P". "Pe", as used by the plaintiff, admittedly connotes the expression, and meaning, "pay". Since the plaintiff - as well as the defendants - provides services by which online payments can be made, the expression "pay" is descriptive of the services provided by the plaintiff and the defendants. Had, instead of "Pe", the plaintiff used the suffix "Pay", i.e. had its registered trademark been "PhonePay", the plaintiff would not have been able to claim any exclusivity, over the "Pay" suffix, or bring a case for infringement against the defendants, had their trademark been "BharatPay". By misspelling "Pay" as "Pe", the legal position cannot change. The plaintiff would, therefore, be entitled to claim exclusivity over the suffix "Pe", as it would have been, had the suffix in its trademark been "Pay". As words, they are entirely different, except for the "Pe" suffix. "Phone" and "Bharat" are not even phonetically similar.”
Deceptive similarity, between the plaintiffs and defendants' marks, is claimed, apart from the common "Pe" suffix, only on the ground that both are in purple, and similar font. Besides the fact that these are, prima facie, insufficient to make out a case of confusing or deceptive similarity, it does not appear, at a plain glance, that the colouring of the letters in the two marks, or their font, is the same. Besides, the nature of services provided by the plaintiff and the defendant's is also different.
The plaintiff provides a plaintiff online payment portal. Defendants provide a single QR code, based on which the customer could work with all consumer UPI-based applications, including the "PhonePe" application of the plaintiff. Consumers who deal with such applications may be expected, prima facie, to know the difference. No prima facie case of passing off can, therefore, be said to exist, even on this ground. Hence, no case for grant of interim injunction against the defendant, therefore, made out.
Appearing counsel/s : Mr. Gaurav Pachnanda, Mr. Mohit Goel, Mr. Sidhant Goel, Mr. Aditya Goel, Mr. Karmanya Dev Sharma, Ms. Namrata Sinha, Mr. Jayant Mehta, Ms. Shilpa Gupta, Mr. Vaarish K. Sawlani, Mr. Ranjeet Singh Sidhu and Ms. Smiti
