PhonePe Is Not An Innovator Of ‘Pe’ Formative Mark: Madras HC Refuses To Injunct DigiPe From Using ‘Pe’ Mark

Finding that the plaintiff's trademark is “PhonePe”, whereas the defendants' trademark is “DigiPe”, and except the suffix “Pe”, there is no other similarity, the Madras High Court held that the suffix “Pe” of the plaintiff is not one of its kind and there are other trademarks with “Pe” already in the market, such as “Phone Pe Deal”, “Phone Pe Store”, “Phone Pe Crore”, “Pe”, “Pay” and so on.

Therefore, observing that Plaintiff is not the innovator of the “Pe” formative mark, the High Court refused to interfere in the order passed by the Single Judge dismissing injunction sought by plaintiff restraining the defendants from passing off the trade dress/copying the contents of the plaintiff's domain name.

The Division Bench of Chief Justice Sanjay V. Gangapurwala and Justice P.D. Audikesavalu observed that “The plaintiff provides its services to businesses/merchants by enabling them to accept payments and services from its customers for the products and services on their platform. Whereas, the defendants “DigiPe” App facilities services only to merchant establishments and the same is not used by an individual customer. It has not been shown that the plaintiff and the defendants cater to the same clientele and/or customers”.

Senior Advocate Sathish Parasaran appeared for the Appellant, whereas Advocate R. Sathish Kumar appeared for the Respondent.

The brief facts of the case were that the plaintiff had sought for interim injunction to restrain the defendants from infringing the registered trademark of the plaintiff “PhonePe” by using the “DigiPe” mark and passing off the trademark “PhonePe” by use of their mark “DigiPe”. The plaintiff also sought an injunction to restrain the defendants from using the domain name DigiPe.com as well as injunction restraining the defendants from passing off the trade dress/copying the contents of the plaintiff's domain name. The Single Judge however, dismissed the Original Applications on the ground that plaintiff failed to make out a prima facie case for grant of interim injunction, and held that the plaintiff failed to disclose material facts concerning dismissal of the similar interim applications filed against third parties before the other High Courts which, if disclosed, will have a bearing on the outcome of the said applications.

After considering the submissions, the Bench found that the “PhonePe” is a registered trademark of the plaintiff and the same is a distinctive mark conceived and adopted by the plaintiff as early as September, 2015.

“It is not in dispute that the plaintiff is having registration for the combination of the word namely “Phone” and “Pe”. The expression “Pe” is not registered. The Hindi equivalent of “Pe”, to wit “is”, is registered with the Trademark Registry”, added the Bench.

The Bench went on to observe that the plaintiff’s application “PhonePe” acts as a container for various payment instruments, including but not limited to wallet, debit/credit card, Unified Payment Interface (UPI) and the external wallet, whereas, the defendants “DigiPe” App facilities services only to merchant establishments and the same is not used by an individual customer.

“The plaintiff is approbating and reprobating. While getting its trademark registered, the plaintiff's stand was that the cited marks were not similar to its mark “PhonePe” and now it is making a grievance against the defendants for using the mark “DigiPe”. As observed above, the grant of injunction is an equitable relief. The plaintiff has taken a somersault while taking a stand in the plaint, then what it took while registration of its mark”, added the Bench.

Accordingly, the Bench dismissed the appeal.

Cause Title: Phonepe Pvt. Ltd. v. Digipe Finhtech Pvt. Ltd. and Ors.

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