Madras High Court
Also Having Its Branch Office At vs Bundlepe Innovations Pvt. Ltd on 21 January, 2025
Author: P.Velmurugan
Bench: P.Velmurugan
Civil Suit (COMM DIV)No.119 of 2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Reserved on 06 / 01 / 2025
Pronounced on 21 / 01 / 2025
CORAM
THE HONOURABLE Mr. JUSTICE P.VELMURUGAN
Civil Suit (COMM DIV)No.119 of 2023
PHONEPE PRIVATE LIMITED
Having its Registered Office at
Office-2, Floor 4, 5, 6, 7, Wing A,
Block A, Salarpuria Softzone Service Road,
Green Glen Layout,
Bellandur, Bangalore South,
Bangalore, Karnataka - 560 103.
Also having its branch office at
No.51/117, Nelson Tower,
Nelson Manickam Road,
Aminjikarai, Chennai - 600 029.
Rep. by its Authorized Signatory Mr.Rahul Kumar ... Plaintiff
(amended as per order dated 14.02.2024 in
Application No.626 of 2024 and time extended
as per order dated 28.02.2024 and 11.03.2024)
Vs.
1. BundlePe Innovations Pvt. Ltd.,
Durga Abason, RA 423,
Nabapally, Pole -02/521,
Sector-IV, Kolkata,
West Bengal - 700 098
Email: [email protected]; [email protected];
[email protected]
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Civil Suit (COMM DIV)No.119 of 2023
2.Mr.Prashanta Patra, Director,
BundlePe Innovations Pvt Ltd.,
Durga Abason, RA 423,
Nabapally, Pole - 02/521,
Sector-IV, Kolkata,
West Bengal - 700 098.
Email: [email protected]; [email protected]
[email protected]
3.Mr.Suman Kundu, Director,
BundlePe Innovations Pvt Ltd.,
Durga Abason, RA 423,
Nabapally, Pole-02/521,
Sector-IV, Kolkatta,
West Bengal - 700 098.
Email: [email protected]; [email protected]
[email protected] ... Defendants
Prayer:-
Civil Suit has been filed under Order VII Rule 1 C.P.C. r/w IV Rule 1 of
O.S.Rules and Sections 27, 28, 29, 134 & 135 of the Trade Marks Act, 1999
and Section 7 of the Commercial Courts Act, prays for a judgment and decree
against the defendant on the following terms :
(i) To declare the ‘PhonePe’ Mark as WELL-KNOWN TradeMark under
Section 2 (1) (zg) read with Section 11 of the Trade Marks Act, 1999 and
issue consequently directions to appropriate authorities;
(ii) To grant permanent injunction restraining the defendants, its
proprietor/directors/partners office, dealers, distributors, successors-in-
business, servants, agents, employees, representatives and all others persons
claiming through or under them from in any manner from infringing the
registered trademarks Phonepe of the plaintiff by using the "BundlePe" &
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Civil Suit (COMM DIV)No.119 of 2023
"LatePe" marks; and/or any other mark identical and/or deceptively similar
mark including the Apps BundlePe
https://play.google.com/store/apps/details?id=com.bundlepe.app&hl=en&gl=
US and Latepe
https://play.google.com/store/apps/details?id=com.latepe.app&hl=en&gl=US
available on Google Play Store platform in any manner whatsoever;
(iii) To grant permanent injunction restraining the defendants, its
proprietor/directors/partners office, dealers, distributors, successors-in-
business, servants, agents, employees, representatives and all others persons
claiming through or under them from in any manner from passing off and/or
enabling others to pass off the plaintiff's trademarks PhonePe by using the
"BundlePe" & LatePe" marks, and/or any other mark identical and/or
deceptively similar mark including the Apps BundlePe
https://play.google.com/store/apps/details?id=com.bundlepe.app&hl=en&gl=
US and Latepe
https://play.google.com/store/apps/details?id=com.latepe.app&hl=en&gl=US
available on Google Play Store platform in any manner whatsoever;
(iv) To grant permanent injunction restraining the defendants its
proprietor/directors/partners and officers, dealers, distributors successors-in-
business, servants, agents, employees, representatives and all other persons
claiming through or under them from in any manner from diluting the
distinctive character of plaintiff's registered Trademarks PhonePe or indulging
in any activity which takes unfair advantage of plaintiff's goodwill and
reputation in plaintiff's registered trademarks or by any activity amounting to
unfair trade practice;
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(v) To grant permanent injunction restraining the defendants, its
proprietor/directors/partners officers dealers, distributors, successors-in-
business servants, agents, employees, representatives and all other persons
claiming through or under them from in any manner using and/or continuing
to use the domain name, namely https://bundlepe.com/ & https://latepe.in/
or any other domain names which is similar to that of the plaintiff's registered
trademarks and domain names of PhonePe.in any manner whatsoever;
(vi) To grant permanent injunction restraining the defendants, its
proprietor/directors/partners and officers, dealers, distributors,successors-in-
business, servants, agents, employees, representatives and all other persons
claiming through or under them from in any manner passing off the trade
dress and/or copying the contents from the plaintiff's domain names/website
on the domain names https://bundlepe.com/ & https://latepe.in/ and or any
other domain names belonging to the defendants 1 to 3.
(vii) Defendant Nos.1 to 3 be ordered and decreed to pay the plaintiff a
sum of Rs.10,00,000/- as punitive and compensatory damages for committing
acts of infringing of trademark and passing off or such other sum as may be
found due and payable by this Court after an account of the profits made by
the defendants is rendered.
(viii) To pass a preliminary decree in favour of the plaintiff directing the
defendant Nos.1 to 3 for rendition of accounts of sales and profits under the
"BundlePe" & "LatePe" marks and a final decree be passed in favour of the
plaintiff for the amount of profit found to have been made by the defendants
1 to 3 after such accounts are rendered.
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(ii) To award the costs of the suit.
For Plaintiff : Mr.P.Giridharan
For Mr.H.Siddharth
For Defendants : Mr.R.Sathish Kumar
--------
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.
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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."
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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
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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, denying any
similarity between their marks and PhonePe. Consequently, the plaintiff issued
a second notice in March 2023, reiterating its demands, but the defendants
persisted with their use of the contested marks, leading to the filing of the
present suit.
4. Gist of the written submissions:-
4.1. The defendants, in their written statement, categorically deny all
allegations raised in the plaint and submit that the suit is not maintainable
either in law or on facts. It is stated that the registered office of the
defendants is in Kolkata, while the registered office of the plaintiff is in
Mumbai. There is no cause of action in Chennai, and hence, the suit is liable
to be dismissed on the grounds of lack of jurisdiction and forum non
conveniens.
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4.2. The first defendant company, BundlePe, was incorporated on 16th
November 2022 following all necessary procedures. The Registrar of
Companies carried out all the procedural requirements and issued the
incorporation certificate. No objections were raised regarding the name
"BundlePe" during this process. As such, the plaintiff's claims concerning the
name are without merit.
4.3. BundlePe offers a comprehensive platform to its customers for
availing various bill payment and recharge services, including mobile
recharge, DTH recharge, Fastag services, cable payments, and utility bill
payments such as electricity, landline, piped gas, water, broadband, and credit
card bills. Additionally, it allows customers to make financial and tax-related
payments, such as loan EMI payments, insurance premiums, municipal taxes,
and municipal service challans. Users also have the opportunity to earn
cashback offers on each utility and bill payment.
4.4. Unlike the plaintiff's app, PhonePe, the defendants' BundlePe does
not provide money transfer services using mobile numbers, bank/UPI IDs, or
QR codes. This distinction clearly demonstrates that there is no similarity
between the two platforms. Further, BundlePe offers another financial service
called LatePe, which provides a pay-later option for purchasing electronic
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gadgets like headphones, laptops, and mobile phones, allowing users to defer
payments. However, the LatePe app is still in its testing phase, with no
customers onboarded yet. BundlePe has approximately 1,20,000 customers
across India, and this number is growing.
4.5. The plaintiff’s suit is primarily based on the use of the Hindi word
"Pe," which is not maintainable. The plaintiff has suppressed the fact that
their claims regarding the word "Pe" were rejected by the Delhi High Court in
C.S.(Comm) 292 of 2019 by order dated 15.04.2021, concerning BharatPe.
The plaintiff’s appeal against the decision was withdrawn. Similar contentions
of the plaintiff have also been rejected by the Bombay High Court. The
defendants, therefore, contend that the plaintiff is estopped from raising the
same claims in the present suit.
4.6. The defendants assert that the trademark "PhonePe" is generic
and does not qualify as a trademark. The mark deserves to be expunged from
the Registrar of Trademarks as it lacks distinctiveness. The defendants reserve
their right to initiate proceedings for the cancellation of the plaintiff's
trademarks. The combination of the words "Phone" and "Pe" is neither unique
nor distinctive as alleged by the plaintiff. The plaintiff’s explanation that
"PhonePe" means "on the phone" contradicts their claim of distinctiveness. In
fact, the word "Pe" is merely a misspelling of the word "Pay," which has been
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acknowledged by the Delhi High Court in previous proceedings.
4.7. The plaintiff is attempting to monopolize common words such as
"Phone," "Pay," and "Pe" by claiming exclusive rights to their use in different
spellings. This is evident from their attempt to register phonetic variants like
"Fone" and "Pe." The defendants contend that such monopolization of generic
words is impermissible under trademark law. The plaintiff cannot
simultaneously claim that "Pe" means "on" or "above" in Hindi and also assert
that it is distinctive, as this would make the entire trademark generic and
descriptive of the services provided.
4.8. The defendants submit that the plaintiff’s suit should be dismissed
in its entirety, as the plaintiff has failed to establish the distinctiveness of their
mark "PhonePe." The plaintiff's claims are based on common words used in
ordinary language and cannot be monopolized. The defendants further submit
that there is no basis for the plaintiff's claims in law, and the suit is merely an
attempt to stifle competition.
4.9. In light of the above, the defendants pray that the suit be
dismissed with costs, as the plaintiff has failed to establish any valid or
distinctive rights over the trademark 'PhonePe.' The defendants further
reserve the right to initiate proceedings for the cancellation of the plaintiff’s
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trademark.
5. By order dated 16.11.2023, this Court framed the following
issues for trial:
“(1) Whether the mark “BundlePe” & “LatePe” is
deceptively similar to the plaintiff's registered mark “PhonePe”?
(2) Whether the plaintiff is entitled for permanent
injunction against the defendant from infringing the plaintiff's
trademark “PhonePe”?
(3) Whether the plaintiff is entitled for permanent
injunction against the defendant for passing off?
(4) Whether the plaintiff is entitled to damages of
Rs.10,00,000/- against the defendants?
(5) Whether the defendant is liable to render accounts to
the plaintiff?
(6) Whether the defendant ought to be permanently
injuncted from using the domain name https://bundlepe.com/ &
https://latepe.in/ and/or any other domain names which is
deceptively similar to plaintiff's domain name “phonepe.in”?
(7) Whether the defendant ought to be permanently
injuncted from passing off the trade dress or copying the
contents from the plaintiff's domain names/website
“phonepe.in”?
(8) Whether the plaintiff's PhonePe mark is a well-known
mark under Section 2(zg) read with Section 11 of the Trade
Marks Act, 1999?
(9) Whether the mark “BundlePe” & “LatePe”dilutes the
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distinctive character of the plaintiff's mark PhonePe?
(10) Whether the usage of the word Pe by the
defendants infringes the registered mark of the plaintiff ?
considering Rule 28 of the Trademark Rules which permits
transliteration between Hindi and English?
6. During the course of argument, this Court has framed the
additional issue on 16.07.2024:-
"Whether this Court has the jurisdiction to try the present suit?"
7. Before the learned Additional Master - III, High Court, Madras,
Mr.Rahul Kumar, Authorized Signatory of the Plaintiff's company was examined
as a witness (PW1) on behalf of the plaintiff. He had also filed a proof
affidavit, reiterating the pleadings made in the plaint. Through PW1, the
following documents were marked as exhibits:-
Ex.P1 is the printout of Incorporation Certificate
of the plaintiff dated 18.11.2016 and 13.02.2020.
Ex.P2 is the copy of the Authorization Letter
issued by the Reserve Bank of India, dated 09.12.2016 and
23.08.2022.
Ex.P3 is the printout of Master Data extracted
from the Ministry of Corporate Affairs of Defendant No.1
Ex.P4 is the printout of the Extract of Domain
name of Defendant No.1 from Whois Database.
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Ex.P5 is the photocopies of Certificate of
Registration of Trademark of the plaintiff dated 06.09.2022
Ex.P6 is the Truecopy of List of Plaintiff's Active
Marks Status Report as on 11.11.2022.
Ex.P7 is the true copy of List of Domain Names
owned by the plaintiff.
Ex.P8 is the printout of the Extract from Plaintiff's
Website reflecting Offline Merchant Partners and Brand
Partners dated 09.03.202.
Ex.P9 is the printout of Extract of the Plaintiff's
Account on Social Media Platforms.
Ex.P10 is the printout of News Articles showing
the goodwill, growth and reputation of the plaintiff.
Ex.P11 is the printout of the Details of Registered
users of the plaintiff along with market share of the plaintiff
for Q4-22.
Ex.P12 is the printout of the Awards and
Accolades received by the plaintiff.
Ex.P13 is the printout of Extract of Websites of
Defendant No.1 showing use of "Bundle Pe and "LatePe"
Marks.
Ex.P14 is the printout of Trademark Application for
the "Bundle Pe" Marks filed by Defendant No.1
Ex.P15 is the printout of 1st Cease and Desist
Notice sent by the plaintiff's advocate to the Defendant
Nos.1, 2 and 3, dated 07.03.2023.
Ex.P16 is the printout of 2nd Cease Desist Notice
sent by the plaintiff's advocate to the Defendant Nos.1, 2 and
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3, dated 28.03.2023.
Ex.P17 is the printout of Reply issued by counsel
for Defendant Nos.1, 2 and 3 dated 12.04.2023.
Ex.P18 is the printout of Data taken from National
Payment Corporation of India (NPCI) showing the transaction
volume of the plaintiff April 2023.
Ex.P19 is the printout of Screenshots showing the
listing of Defendant' No.1's app and downlads taken from
Google Play Store.
Ex.P20 is the printout of Plaintiff's Registered
Trademarks and Domain names.
Ex.P21 is the printout of Defendant No.1 "Bundle
Pe' and LatePe" Mark and Domain names.
Ex.P22 is the original Board Resolution dated
20.12.2023.
Ex.P23 is the Photocopy of the Certificate of
Chartered Accountant certifying Marketing expenditure and
turnover of the Plaintiff's Company dated 13.05.2023.
On the side of the defendants, no one was
examined, and the communication received from the
Registrar of Trade Marks, Chennai, dated 01.02.2017, and the
plaintiff's application dated 20.07.2017 were marked through
P.W.1 as Ex.D1.
8. Submissions of the plaintiff.
8.1. The learned counsel for the plaintiff contends that the
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"PhonePe" trademarks are a combination of two words: "Phone" and "Pe."
The word "Pe" is not a dictionary word and does not exist in the English
language. It was adopted as a unique source identifier by the plaintiff,
forming a common formative element across all its marks. The distinctive
spelling (in English) and capitalization of "Pe" confer inherent distinctiveness,
making it automatically entitled to protection as an essential feature of the
"PhonePe" trademarks. These marks are suggestive, if not arbitrary or
fanciful. Even otherwise, due to extensive, continuous, and uninterrupted use,
"PhonePe" has acquired distinctiveness. The learned counsel asserts that the
plaintiff was the first to coin the combination of "Phone" and "Pe" and has
obtained trademark registrations for various "PhonePe" marks. The plaintiff
also holds trademarks in phonetic variations like "FonePay" and "FonePe," as
well as in dissimilar marks such as "CardPe" and "StorePe," all incorporating
the "Pe" element.
8.2. The learned counsel further asserts that the word "Pe," a
transliteration of a Hindi word, is the prominent and dominant component of
"PhonePe." Due to extensive promotion, the public associates the
pronunciation of "PhonePe" with the Hindi word "Pe." Visually, the plaintiff's
logo, used alongside the "PhonePe" trademark, leaves no doubt that the two
are synonymous.
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8.3. The learned counsel highlights that the defendant's marks,
"BundlePe" and "LatePe," are deceptively similar to the plaintiff's marks. The
defendant offers services similar to the plaintiff’s in the same field of activity.
Although the defendant has stopped using the infringing apps, the counsel
contends that the defendant's use of the marks "BundlePe" and "LatePe" is
clearly a strategic attempt to copy the plaintiff’s trademarks, engaging in
unfair competition. The delisting of the app after the lawsuit demonstrates the
defendant’s intent to take unfair advantage of the plaintiff's reputation and
goodwill.
8.4. The learned counsel argues that the plaintiff has established a
prima facie case of passing off, as the use of "BundlePe" and "LatePe" would
deceive consumers into believing that the defendant's services are connected
with the plaintiff’s business. The plaintiff’s "PhonePe" mark, in use since 2015,
has acquired substantial goodwill, while the defendant's services under
"BundlePe" and "LatePe" were only launched in 2022/2023. The field of
activity, mobile and internet-based payment services, remains the same.
8.5. The learned counsel points out that the defendant has capitalized
the "P" in "Pe," just as the plaintiff has done, further emphasizing the
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similarity. The plaintiff’s turnover has dramatically increased, rising to 6800
crores in recent years, highlighting the commercial motive behind the
defendant’s use of deceptively similar marks. The learned counsel submits
that the plaintiff need not prove exact damages since the goodwill and
misrepresentation are clear. Referring to various judgments, including
Laxmikant V. Patel v. Chetanbhai Shah, the learned counsel argues that
the plaintiff is entitled to damages of Rs. 10,00,000 for the infringement.
8.6. The learned counsel also contends that the plaintiff holds several
domain names containing "PhonePe" and argues that the dominant "Pe"
element, even when registered in Devanagari script, deserves equal
protection. As the defendant has not challenged the validity of the
trademarks, the statutory assumption that the trademarks are valid must be
accepted. The learned counsel refers to judgments such as PEPS Industries
Private Limited v. Kurlon Limited to support the argument that once a
prima facie case of infringement is established, an injunction must follow.
8.7. The learned counsel further submits that the plaintiff is the
registered proprietor of the trademark "PhonePe," and its statutory rights
must be protected. The end services are for users in the UPI business, and
once a prima facie case of trademark infringement is established, an
injunction must normally follow. Since the plaintiff is the largest UPI service
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provider in India with more than 30 crore users, there is no doubt that the
plaintiff will suffer if the defendants are not restrained from using the
infringing mark "BundlePe."
8.8. Additionally, if the defendants are restrained from using the mark
"BundlePe," the first defendant may not lose business, considering that the
app is no longer in use and the website has less than 1 lakh users. Having
regard to the plaintiff's exclusive right to use the mark and weighing various
factors, as well as the balance of convenience, the plaintiff is entitled to
protection. Otherwise, the use of such a mark would amount to the
defendants taking unfair advantage of the plaintiff's reputation and would be
detrimental to the plaintiff's registered trademark.
8.9. The mark "PhonePe" has also acquired a secondary meaning, as it
has become common parlance for the public to use the plaintiff's mark to
indicate that they are performing a UPI transaction. Since "PhonePe" has
become a source identifier for UPI transactions, it is entitled to protection, as
established in Godfrey Philips India Ltd. v. Girnar Food & Beverages
(P) Ltd. [2004 (5) SCC 257]. As the mark "PhonePe" is popularly known, the
action of the defendants is unfair competition, which deserves protection. In
Giorgio Armani v. Banjara Hills [CS (Comm) 708/2018], the court held
that marks that have become a source identifier must be protected.
In light of the above, the learned counsel prays for a decree in favor of
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the plaintiff.
9. Submissions of the learned counsel appearing for the
defendants.
9.1. The learned counsel for the defendants contends that the suit
is not maintainable in law or on facts, as the registered office of the
defendants is located in Kolkata, while the plaintiff's registered office is in
Mumbai. The learned counsel asserts that there is no cause of action that
arises in Chennai, rendering the suit liable for dismissal on the grounds of lack
of jurisdiction and forum non conveniens.
9.2. The learned counsel for the defendants asserts that the
defendant's corporate name "BundlePe" is duly registered, with the company
established in 2022. Accordingly, the plaintiff is barred from questioning the
validity of this corporate name. The learned counsel firmly denies that the
plaintiff has used "Pe" as a unique identification element of its trademarks. It
is emphasized that "Phone" and "Pay" are common terms used in the industry,
and the plaintiff's attempt to monopolize these ordinary descriptors is both
legally impermissible and unjustified.
9.3. Furthermore, the learned counsel contends that the plaintiff
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cannot claim exclusive rights over "Pe," as it is a word found in the Hindi
dictionary and lacks distinctiveness. The plaintiff's assertions regarding the
uniqueness of "Pe" are unfounded, and the counsel highlights the absence of
material evidence to prove that the trademark has acquired a distinctive
meaning. The frequent use of phrases like "Phone Pe Kardo/Lo" underscores
the descriptiveness of the term rather than any claim of distinctiveness. Thus,
the argument that "PhonePe" can be deemed distinctive, arbitrary, or fanciful
is thoroughly refuted.
9.4. The learned counsel also emphasizes that the defendant's
business is exclusively focused on recharge and bill payments, which is
functionally different from the plaintiff's broader range of payment services.
The defendants assert that they have successfully onboarded approximately
120,000 merchants across India for their "BundlePe" app, which exclusively
offers utility services related to recharge and bill payments. They dispute the
plaintiff's claims of being the number one financial app in the app store or
achieving over 10 million downloads, attributing the plaintiff's prominence as
a UPI transactions driver to its extensive customer base with varied daily
needs.
9.5. The learned counsel argues that the plaintiff’s assertion that
"PhonePe" has become a household name in India is baseless and primarily
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the result of significant advertising efforts rather than any inherent
distinctiveness. The defendants maintain that "BundlePe" is phonetically,
visually, and structurally distinct from "PhonePe." They contend that the
defendants are not capitalizing on the plaintiff's trademark reputation, and the
claims of unfair competition lack merit.
9.6. Moreover, the learned counsel denies that "PhonePe" has been in
continuous use since 2015. The suit is characterized as a strategic maneuver
to suppress competition and deter any entity from using the term "Pe." It is
highly presumptive for the plaintiff to assert that it is synonymous with
payment or financial services, given the presence of numerous other
providers in the market, such as Google Pay, Paytm, Apple Pay, Samsung Pay,
and Amazon Pay. The claim that "payment and financial-related services via
mobile phone" suggests that the trademark "PhonePe" derives directly from
these services’ description further demonstrates its generic nature.
9.7. The learned counsel highlights that the plaintiff's filings in multiple
high courts illustrate an attempt to secure ex parte orders to stifle
competition. The merger of "Phone" and "Pe" cannot be deemed distinctive
for the reasons stated, and therefore the plaintiff's registration should be
annulled. The learned counsel emphatically denies that the use of "BundlePe"
and "LatePe" would create public confusion. The distinctive prefixes "Bundle"
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and "Late" clearly differentiate the defendants’ services, and the counsel
argues there is no basis for assuming consumer confusion regarding the
origin and source of the goods offered by both parties.
9.8. Furthermore, it is deemed implausible to suggest that "BundlePe,"
"LatePe," and "PhonePe" can be used interchangeably or are similar. The
learned counsel stresses that the plaintiff's claims of goodwill and reputation
cannot be equated with mere turnover, as various apps, including the
defendants', maintain distinct customer bases for a variety of reasons. The
defendants assert that "Pe" serves as a synonym for "Pay" in English, directly
relating to the services provided by their apps. The unique prefix "Bundle"
serves to further differentiate the defendants’ offerings, and the counsel
firmly states that the plaintiff cannot lay claim to a monopoly over the use of
the word "Pe."
9.9. The defendants have not utilized the Hindi representation of "Pe"
and affirm their commitment not to do so until the suit is resolved. Moreover,
the defendants seek permission to file an application to rectify the trademark
"Pe" written in Hindi, maintaining that the plaintiff's registration effectively
undermines their claims, as "PhonePe" fundamentally translates to "on the
phone," as acknowledged by the plaintiff.
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9.10. All allegations made by the plaintiff against the defendants
regarding misleading consumers and damaging the plaintiff's reputation are
categorically rejected. The plaintiff is required to provide substantial evidence
to support these claims. In light of the foregoing, the learned counsel for the
defendants respectfully prays for the dismissal of the suit.
10. In reply, the learned counsel for the plaintiff asserts that the
maintainability of the suit is well-founded due to several key factors. First, the
defendants are actively conducting their business in Chennai and are offering
their services to customers within this jurisdiction. Their applications and
website are interactive platforms that can be accessed by any individual in
Chennai, allowing for seamless transactions. Additionally, the defendants'
mobile applications and websites are freely downloadable from popular
platforms such as the Play Store and App Store, which facilitates their
commercial exploitation in Chennai. Notably, it has been established that
transactions involving the "BundlePe" and "LatePe" applications were accessed
within the jurisdiction of this Court. This is evidenced by a specific transaction
conducted using Phone Number 8148845884 at the address Chennai 600 001.
The learned counsel further emphasizes that the plaintiff has made specific
pleadings and submitted documentation substantiating the interactive nature
of the defendants' platforms, highlighting their targeted marketing efforts
aimed at consumers in Chennai. As such, the cause of action, or parts thereof,
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can be appropriately attributed to activities occurring within this jurisdiction.
Moreover, under Section 134(2) of the Trade Marks Act, a suit may be
instituted in the courts within the local limits of whose jurisdiction the plaintiff,
at the time of the suit's institution, actually and voluntarily resides, carries on
business, or personally works for gain. Thus, according to Section 134(1) of
the Act, the plaintiff has the option to file the suit not only where the alleged
infringement occurred or the cause of action arose but also in the courts
where the plaintiff resides or carries on business, even if no wrong has
occurred or cause of action has arisen in that court. Given that the plaintiff
maintains a branch office in Chennai, the current suit is maintainable, and this
Court possesses the necessary territorial jurisdiction to adjudicate the matter.
11. Heard the learned counsel on either side and perused the
materials available on record.
12. Since this Court, on 16.07.2024, framed the additional issue
regarding jurisdiction, the Court first answers the additional issue as follows:
12.1. According to the defendants, the suit is not maintainable in
Chennai, as their registered office is in Kolkata and the plaintiff's registered
office is in Mumbai, asserting that no cause of action arises in Chennai.
However, upon a careful perusal of the records, it is evident that the
defendants are actively conducting their business in Chennai. The plaintiff has
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produced substantial evidence, including specific transaction records, such as
one involving phone number 8148845884 at an address in Chennai (600 001),
which demonstrates that the defendants' applications "BundlePe" and
"LatePe" have been accessed within this jurisdiction. Further, Exhibit P19,
which details multiple transactions in Chennai, reinforces the claim that the
defendants are indeed doing business within this jurisdiction. Moreover, the
defendants' mobile applications and websites are interactive platforms that
can be accessed by users in Chennai, further supporting the contention that
they are actively engaging in business operations in this jurisdiction.
Additionally, the plaintiff has a branch office in Chennai, and thus, the suit is
maintainable before this Court. Furthermore, Section 134(1) of the Trade
Marks Act provides that a suit can be filed not only where the alleged
infringement occurred but also where the plaintiff resides or conducts
business. As the plaintiff operates in Chennai, the suit is properly filed in this
jurisdiction. In light of the above, this Court holds that part of the cause of
action arises within Chennai, and as such, the suit is maintainable before this
Court.
13. Issue No.(1) Whether the mark “BundlePe” &
“LatePe” is deceptively similar to the plaintiff's
registered mark “PhonePe”?
13.1. The plaintiff contends that the marks "BundlePe" and
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"LatePe" are deceptively similar to its registered mark "PhonePe" because the
word "Pe" is a distinctive and unique element that the plaintiff has used
extensively in its trademark. The plaintiff argues that "Pe" is not a generic
word and does not exist in the English language, thus making it a strong
identifier of the plaintiff’s brand. Due to its extensive use, the word "Pe" has
acquired a secondary meaning, and the public has come to associate it with
the plaintiff’s payment services. The plaintiff further submits that the
defendant's marks are visually, phonetically, and conceptually similar to
"PhonePe," especially because they share the same "Pe" element. Given the
plaintiff's extensive market presence and goodwill in the mobile payment
industry, the plaintiff believes that the defendant’s marks could lead to
consumer confusion, with consumers potentially assuming that the services
offered under "BundlePe" and "LatePe" are connected with or endorsed by the
plaintiff.
13.2. On the other hand, the defendant argues that the marks
"BundlePe" and "LatePe" are not deceptively similar to "PhonePe." The
defendant submits that the word "Pe" is common in the payment services
industry and is a transliteration of the Hindi word "Pay", which is widely used
by other companies such as Google Pay, Paytm, and Apple Pay. The defendant
further contends that "BundlePe" and "LatePe" are sufficiently distinct from
"PhonePe" due to the prefixes "Bundle" and "Late" used in their marks, which
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differentiate the marks both visually and conceptually. The defendant also
asserts that the plaintiff cannot claim exclusive rights over the use of "Pe"
since it is a generic term, and there is no evidence of actual consumer
confusion. The defendant highlights that the plaintiff’s claim of the marks
being confusingly similar is based on an assumption and not on actual market
conditions. The defendant denies that they are attempting to ride on the
plaintiff’s goodwill and points out that their services, which focus on recharge
and bill payments, are distinct from the plaintiff’s broader payment services.
13.3. In this case, the core issue is whether the marks "BundlePe"
and "LatePe" are deceptively similar to the plaintiff's registered mark
"PhonePe" and whether they are likely to cause consumer confusion. The
primary concern revolves around the distinctiveness of the term "Pe" and its
potential to create a mistaken association between the plaintiff’s and
defendant's services. First, the term "Pe" is not as unique or distinctive as the
plaintiff claims. The defendant has pointed out that "Pe" is commonly used in
the payment services industry and is a transliteration of the Hindi word "Pay,"
which is widely used by other prominent companies such as Google Pay,
Paytm, and Apple Pay. Given the widespread use of "Pe" in the payment
sector, it cannot be exclusively associated with the plaintiff. The plaintiff’s
claim that "Pe" has acquired secondary meaning is therefore questionable, as
this term has not been uniquely tied to the plaintiff’s brand in the broader
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market. Furthermore, the prefixes used in the defendant's marks "Bundle"
and "Late" introduce significant distinctions that differentiate these marks
from "PhonePe." The prefix "Bundle" implies a package of services, and "Late"
has no conceptual or phonetic similarity to "PhonePe." These differences are
not just superficial; they create distinct brand identities that are unlikely to
confuse consumers. Additionally, the defendant has pointed out that there is
no evidence of actual consumer confusion. The plaintiff’s argument is based
on theoretical risk, but without tangible proof of confusion in the marketplace,
this claim lacks substantial merit. The defendant's focus on recharge and bill
payment services is also different from the broader payment services provided
by the plaintiff, which further minimizes the likelihood of confusion. Thus,
after considering all arguments, the Court is likely to find that "BundlePe" and
"LatePe" are not deceptively similar to "PhonePe." The use of "Pe," a common
term in the payment industry, along with the significant differences in the
marks' prefixes and the distinct nature of the defendant's services,
undermines the plaintiff's argument of consumer confusion. In conclusion, the
defendant’s marks do not infringe upon the plaintiff’s trademark and the
marks "BundlePe" and "LatePe" are sufficiently distinct, and there is no
likelihood of consumer confusion between these marks and "PhonePe." and
hence, the issue is answered against the plaintiff.
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14. Issue 2: Whether the plaintiff is entitled to a
permanent injunction against the defendant
from infringing the plaintiff’s trademark
“PhonePe”?
14.1. The plaintiff seeks a permanent injunction to restrain the
defendants from using the marks "BundlePe" and "LatePe," arguing that the
defendants’ use of the "Pe" suffix infringes the plaintiff’s rights and creates
confusion in the marketplace. The defendants contend that there is no
infringement of the Plaintiff's trademark. Since the marks "BundlePe" and
"LatePe" are not deceptively similar to "PhonePe," no grounds for an
injunction exist. Furthermore, the defendant asserts that the Plaintiff has
failed to establish that its trademark is well-known or has acquired significant
distinctiveness in a manner that justifies exclusivity over the use of common
terms like "Pe."
14.2. As answered in Issue (i), the marks “BundlePe” and “LatePe” are
not deceptively similar to "PhonePe." The plaintiff has failed to prove that the
defendants’ marks are likely to cause confusion or deception. Moreover, the
plaintiff's reliance on the "Pe" suffix is not sufficient to establish exclusive
rights over the use of a common word. The Court also finds that the plaintiff
has not sufficiently demonstrated that its trademark has acquired such
distinctiveness to merit exclusive rights to the term "Pe" or that it is widely
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recognized across all sectors where the term "Pe" is used in branding. The
defendants’ services differ significantly from the plaintiff’s offerings, and the
Court has already determined that the marks in question are distinguishable.
Considering the lack of consumer confusion or actual harm to the plaintiff’s
business, the court finds that the plaintiff has not established a case for
trademark infringement. The evidence produced fails to demonstrate that the
defendant's actions have caused substantial harm or confusion in the
marketplace. Hence, the plaintiff is not entitled to a permanent injunction.
15. Issue 3: Whether the plaintiff is entitled to a
permanent injunction against the Defendant for
passing off?
15.1. The plaintiff contends that the defendants’ use of similar marks
amounts to passing off, as it is likely to deceive consumers into believing
there is an association between the plaintiff and the defendants. Per contra,
the defendants argue that there is no evidence of passing off. It is further
submitted that they have not misrepresented their goods or services in a
manner that would cause the public to believe they are associated with or
endorsed by the plaintiff.
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15.2. The plaintiff has failed to demonstrate that the mark "PhonePe" is
so uniquely associated with their specific range of services that any use of the
word "Pe" by others would cause a misrepresentation. The plaintiff's
argument that the defendant's use of "Pe" amounts to passing off is
weakened by the common use of this suffix in the digital payment industry.
Further, there is no evidence that the defendants are attempting to pass off
their services as those of the plaintiff. The services offered by the defendants,
namely utility bill payments and recharges, are distinct from those of the
plaintiff. The plaintiff has not provided concrete evidence of harm or confusion
caused by the defendant's actions that would justify a passing off claim. As
such, the plaintiff has not established any grounds for a passing off claim, and
therefore, the issue is also answered against the plaintiff.
16. Issue 4: Whether the plaintiff is entitled to
damages of Rs.10,00,000/- against the
defendant?
16.1. The plaintiff seeks damages for the harm caused to its reputation
and business due to the defendant's alleged infringement and passing off. The
defendants argue that no damages are due to the plaintiff as there has been
no infringement or passing off and the plaintiff has failed to show any actual
loss attributable to the defendants' actions.
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16.2. The plaintiff has not provided sufficient evidence of any financial
loss suffered as a result of the defendant’s actions. The plaintiff has not
demonstrated that the defendant’s use of the marks has caused any tangible
harm to its business or goodwill. Hence, the plaintiff’s claim for damages
appears speculative and lacks the necessary financial proof to support the
amount requested. Since the plaintiff has not established that it has suffered
actual harm or loss, the plaintiff is not entitled to any damages.
17. Issue 5: Whether the defendant is liable to
render accounts to the plaintiff?
17.1. The plaintiff claims that, due to the infringement and passing off
by the defendants, they should account for any profits gained from the
unauthorized use of marks that allegedly replicate the plaintiff's well-known
brand, 'PhonePe,' through the use of the allegedly infringing marks 'BundlePe'
and 'LatePe.' However, the defendants argue that there is no basis for the
plaintiff to demand an account of profits, as no infringement or passing off
has been proved. As held in Issues 1 and 2, the marks "BundlePe" and
"LatePe" are not deceptively similar to the plaintiff's registered mark
"PhonePe," and there is no evidence of any consumer confusion, deception,
or harm caused by the defendant's use of these marks. The defendants
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further assert that they have not made any profits from the allegedly
infringing marks that would require them to render accounts.
17.2. Under Section 135 of the Trade Marks Act, 1999, a person found
guilty of infringing a registered trademark is liable to render accounts of the
profits derived from the infringement. However, this remedy is typically
granted when the plaintiff proves the existence of infringement or passing off,
and that the defendant has derived profits directly from such infringement.
The Court, in Issue No.1, has already concluded that the marks "BundlePe"
and "LatePe" are not deceptively similar to the plaintiff's registered mark
"PhonePe." Therefore, the plaintiff has failed to establish any infringement of
its trademark rights. Since the basis for the request for accounts trademark
infringement does not stand, there is no legal ground for the plaintiff to claim
any profits or gains derived by the defendants through the use of these
marks. Similarly, in Issue No.3, the Court determined that the plaintiff has not
proved the necessary elements for a passing off action. There is no evidence
that the defendants' use of "BundlePe" or "LatePe" has caused any
misrepresentation or confusion among consumers, or that consumers have
been misled into believing that the defendant's services are associated with
the plaintiff. In the absence of passing off, there is no justification for the
defendant to be ordered to render accounts for profits. Considering that no
infringement of the plaintiff’s trademark has been established (as determined
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in Issue 1), no passing off has been proved (as determined in Issue 3), the
plaintiff has not presented any evidence of profits derived by the defendants
from the use of the allegedly infringing marks, and no actual financial harm or
loss has been substantiated, the plaintiff is not entitled to an order requiring
the defendant to render accounts of any profits. Hence, the defendant is not
liable to render accounts to the plaintiff.
18. Issue 6: Whether the defendant ought to be
permanently injuncted from using the domain names
https://bundlepe.com/ & https://latepe.in/ and/or
any other domain names which is deceptively similar
to Plaintiff's domain name “phonepe.in”?
18.1. The plaintiff claims that the defendants' use of the domain names
'https://bundlepe.com/' and 'https://latepe.in/', as well as any other domain
names that may be deceptively similar to the plaintiff's domain name
'phonepe.in,' is misleading and infringes upon its registered trademark
'PhonePe.'"
18.1 According to the plaintiff, the similarity between "PhonePe" and
the defendants’ domain names could cause consumer confusion, harm the
plaintiff’s brand, and damage its goodwill. The plaintiff argues that the use of
the term "Pe" in both the plaintiff's and defendants' domain names increases
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the likelihood of such confusion and seeks an injunction to prevent the
defendants from using any domain names that might be perceived as
associated with the plaintiff.
18.2. The defendants, however, contend that their domain names
"https://bundlepe.com/" and "https://latepe.in/" do not infringe upon the
plaintiff's trademark or domain name. They assert that the domain names are
entirely distinct from "phonepe.in" and do not create any likelihood of
confusion among consumers. The defendants argue that they have
independently registered these domain names and are entitled to use them
for their business activities. They maintain that the addition of the words
"Bundle" and "Late" makes their domain names sufficiently different from
"PhonePe" to prevent any consumer confusion.
18.3. The core issue in this case is whether the defendants' domain
names are "deceptively similar" to the Plaintiff's trademark "PhonePe," which
would warrant an injunction.
18.4. The plaintiff’s domain name "phonepe.in" is closely related to its
trademark "PhonePe." The defendants’ domain names, however, include the
terms "Bundle" and "Late," which are distinct from the plaintiff's brand. While
the term "Pe" appears in both the plaintiff's and defendants' domain names,
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the Court observed that "Pe" is a common suffix in the digital payment
industry and does not, on its own, create confusion. The inclusion of the
words "Bundle" and "Late" in the defendants' domain names makes them
visually and phonetically different from "PhonePe."
18.5. The Plaintiff must demonstrate that the defendants' domain
names have caused, or are likely to cause, confusion among consumers.
However, the plaintiff did not provide substantial evidence to show that
consumers were actually confused or misled by the defendants’ domain
names. There were no consumer complaints or evidence of lost business due
to the defendants’ domain names. In the absence of such evidence, the Court
found no justification for granting an injunction.
18.6. It is also to be noted that the terms 'Bundle' and 'Late' in the
defendants' domain names appear to describe the nature of their services,
such as offering bill payments or late payment options. These descriptive
terms differentiate the defendants' services from the plaintiff’s services, which
are focused on UPI-based payments and other financial services. This
distinction further reduces the likelihood of confusion between the plaintiff's
and defendants' domain names. Additionally, there is no evidence of actual
confusion or harm to the plaintiff's brand. In light of these considerations, the
plaintiff is not entitled to a permanent injunction restraining the defendants
from using the domain names in question.
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19. Issue No. 7 : Whether the defendant ought
to be permanently injuncted from passing off the
trade dress or copying the contents from the Plaintiff's
domain names/website “phonepe.in”?
According to the plaintiff, the defendants are copying their website design,
layout, and content, causing confusion among consumers who may believe
the defendants' services are connected to the plaintiff. Therefore, the plaintiff
seeks a permanent injunction to stop the defendants from copying the trade
dress and content of their website. However, the defendants deny these
claims, asserting that their website and business are distinct from the
plaintiff’s, and they have developed their own layout and design
independently. It is important to note that although both websites are in the
payment industry, the design and layout are not similar enough to cause
confusion. The plaintiff has not provided specific examples of copied content
or evidence of consumer confusion. Without proof of harm or confusion, the
plaintiff is not entitled to any injunction, as there is no substantial evidence of
passing off.
20. Issue No. 8: Whether the Plaintiff's
PhonePe mark is a well-known mark under Section
2(zg) read with Section 11 of the Trade Marks Act,
1999?
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In this case, the plaintiff’s claim that "PhonePe" qualifies as a well-known
mark under Section 2(zg) and seeks protection under Section 11 of the Trade
Marks Act, 1999. The issue at hand revolves around the deceptive similarity of
the "PhonePe" mark to other marks, rather than focusing solely on its status
as a well-known mark. Section 11 protects well-known marks from the
registration of similar marks that might cause confusion or harm their
reputation. However, "PhonePe" is not deceptively similar to other marks like
"BundlePe" or "LatePe" or any other mark with the "Pe" suffix. The use of
"Pe" as a suffix in the digital payment sector is quite common (e.g., Paytm,
Google Pay), which weakens the distinctiveness of the "PhonePe" mark. This
widespread use of the "Pe" suffix diminishes the likelihood of confusion
between PhonePe and other marks. The presence of the suffix "Pe" is not
unique to the Plaintiff’s mark and is used by multiple brands in the industry,
reducing the chances of deceptive similarity. Even if a mark is considered
well-known under Section 2(zg), Section 11 protects against unfair advantage
or dilution. However, given that "PhonePe" is not deceptively similar to other
marks and the "Pe" suffix is commonly used, there is no real danger of unfair
advantage or harm to the reputation of "PhonePe" in this case. The plaintiff’s
claim does not meet the standard of showing how the use of other
"Pe"-suffixed marks would damage the distinctiveness or reputation of
"PhonePe." Based on the above reasons, the plaintiff’s claim that "PhonePe"
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should be considered a well-known mark and afforded protection under
Section 11 of the Trade Marks Act should be rejected. The marks in question
are not deceptively similar, and the use of "Pe" in the digital payment industry
is common, diminishing any risk of confusion or harm to the reputation of
"PhonePe." Therefore, the Court need not consider the plaintiff’s mark as a
well-known mark under Section 2(zg) and should reject the request for
protection under Section 11. Accordingly, the issue is answered against the
plaintiff.
21. Issue No. 9: Whether the mark
“BundlePe” & “LatePe” dilutes the distinctive
character of the Plaintiff's mark “PhonePe”?
21.1. The plaintiff claims that the defendants’ use of "BundlePe"
and "LatePe" dilutes the distinctive character of its "PhonePe" mark. The
plaintiff argues that the use of “Pe” in both the defendant’s marks and its own
is likely to tarnish the distinctive nature of "PhonePe," particularly since the
plaintiff’s mark is widely recognized and associated with digital payments in
India. The plaintiff contends that this dilution will weaken the plaintiff's
exclusive rights to its mark. The defendants argue that there is no dilution of
the plaintiff's mark. They assert that "PhonePe" and the defendant's marks
are not similar enough to cause any dilution. The defendants contend that
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“Pe” is a common element used in several other trademarks in the digital
payments sector and is not unique to the Plaintiff's mark. The defendants
further argue that the addition of different prefixes such as “Bundle” and
“Late” in their marks differentiates them sufficiently from the Plaintiff’s mark.
21.2. Dilution occurs when the distinctiveness of a well-known
mark is weakened due to the use of similar marks in unrelated goods or
services. In this case, the Court must examine whether the similarity between
the plaintiff’s and defendants’ marks is likely to erode the distinctiveness of
the plaintiff’s mark in the public’s perception. The Court finds that while the
marks share the element “Pe,” the overall impression created by the marks
"BundlePe" and "LatePe" is sufficiently distinct. The defendants’ marks are not
identical to "PhonePe" and serve different business purposes (e.g., bill
payments, pay-later services). Given that the marks are used in different
contexts and that "Pe" is a commonly used suffix in the payments industry,
the Court does not find sufficient evidence that the defendant’s marks will
dilute the distinctiveness of "PhonePe." The Court concludes that the use of
"BundlePe" and "LatePe" does not dilute the distinctive character of the
plaintiff's mark "PhonePe," as the marks are not likely to cause confusion or
weaken the public's association of "PhonePe" with the plaintiff.
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22. Issue No.10: Whether the usage of the
word Pe by the defendants infringes the registered
mark of the plaintiff ? considering Rule 28 of the
Trademark Rules which permits transliteration
between Hindi and English?
22.1. Before delving into the issue, it would be useful to extract Rule
28 of the Trade Marks Rules, 2017.
28. Transliteration and Translation - Where a Trade
mark contains one or more words or numbers in scripts other
than Hindi or English, the applicant shall provide in the
application, a precise transliteration and translation of each
such word and number in English or in Hindi and state the
language to which the word(s) or number(s) belongs.
Rule 28 of the Trade Marks Rules, 2002, allows the transliteration of words
between Hindi and English, facilitating the representation of words in both
scripts. In this case, "Pe" is a transliteration of the Hindi word "Pay," which
translates to "Pay" in English. The term "Pay" is a generic term widely used in
the payment services industry to describe the core function of such services.
Therefore, the mere use of "Pe" by the defendants, which is derived from the
common Hindi word for "Pay," does not constitute an infringement of the
Plaintiff’s registered trademark. "Pe" is not an inherently distinctive or
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arbitrary element. It is commonly used in the payment services industry, with
many other companies such as "Google Pay," "Paytm," and "Apple Pay" using
similar terms. Given its descriptive nature, "Pe" cannot be claimed exclusively
by the plaintiff. The defendants’ usage of "Pe" in "BundlePe" and "LatePe"
should be seen as part of the general vocabulary used in the payment sector,
and as such, it cannot be protected as a distinctive trademark element. The
use of "Pe" by the defendants is unlikely to cause consumer confusion. The
defendants’ marks, "BundlePe" and "LatePe," are visually and conceptually
distinct from "PhonePe," especially because of the different prefixes ("Bundle"
and "Late"). Moreover, the plaintiff’s mark "PhonePe" is registered with a
different meaning and usage than the defendants' marks, which focus
specifically on services like bill payments and recharges. This difference in
service offerings and mark structure further diminishes the likelihood of
confusion. The plaintiff cannot claim exclusive rights over the use of "Pe"
because it is a commonly used word in the payment services industry. The
defendants are not attempting to infringe the plaintiff’s mark by using "Pe" in
a manner that could be seen as exploiting the plaintiff’s goodwill. Instead, the
defendants are using "Pe" in a descriptive and non-exclusive manner. Rule 28
of the Trademark Rules, which allows transliteration between Hindi and
English, supports the defendants’ usage of "Pe" as a legitimate transliteration
of the Hindi word "Pay." Since "Pe" is not a unique or distinctive element of
the Plaintiff’s mark, its use by the defendants does not amount to
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infringement. The defendants are using "Pe" in good faith, as part of their
branding for services that are functionally similar to other payment services in
the market. Hence, the usage of the word "Pe" by the defendants does not
infringe the plaintiff's registered mark, considering Rule 28 of the Trademark
Rules, which permits transliteration between Hindi and English.
23. Considering the facts and circumstances of the case, along with the
oral and documentary evidence and the submissions made by the learned
counsel on either side, the citations referred to by the learned counsel for the
plaintiff are not applicable to the present case, as they are distinguishable on
facts.
24. Accordingly, except for the additional issue regarding jurisdiction,
all the issues are answered against the plaintiff and in favour of the
defendant. As a result, the suit is dismissed. However, there shall be no order
as to costs.
21/01/2025
(1/2)
Index: Yes/No.
Speaking Order : Yes/No.
Neutral Citation Case : Yes/No.
rns
Copy to: The Sub Assistant Registrar, (Original Side),
Madras High Court, Chennai.
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Plaintiff's witness:
Mr.Rahul Kumar - PW1
Documents exhibited on the side of the plaintiff:-
Date Nature of documents Exhibits
18.11.2016 Copy of Incorporation Certificate of the plaintiff Ex.P1
&
13.02.2020
09.12.2016 Copy of Authorization Letter issued by Reserve Ex.P2
& Bank of India
23.08.2022
- Copy of Master Data extracted from the Ministry of Ex.P3
Corporate Affairs of Defendant No.1
- Copy of the Extract Domain name of Defendant Ex.P4
No.1 from Whois Database
06.09.2022 Photocopies of Certificates of Registration of Ex.P5
Trademark of the plaintiff
11.11.2022 True copy of List of Plaintiff's Active Marks Status Ex.P6
Report as on 11.11.2022
- True Copy of List of Domain Names owned by the Ex.P7
plaintiff
09.03.2022 Copy of the Extract from the plaintiff's website Ex.P8
reflecting Offline Merchant Partners and Brand
Partners
- Copy of Extract of the Plaintiff's Account on Social Ex.P9
Media Platforms.
- Copy of of News Articles showing the goodwill, Ex.P10
growth and reputation of the plaintiff
- Copy of the Details of Registered users of the Ex.P11
plaintiff along with market share of the plaintiff for
Q4-2022
- Copy of the Awards and Accolades received by the Ex.P12
plaintiff
https://www.mhc.tn.gov.in/judis
Civil Suit (COMM DIV)No.119 of 2023
Date Nature of documents Exhibits
- Copy of Extract of Websites of Defendant No.1 Ex.P13
showing use of "Bundle Pe" and "LatePe" marks.
- Copy of the Trademark Application for the "Bundle Ex.P14
PE" marks filed by the defendant No.1
- Copy of 1st Cease and Desist Notice sent by the Ex.P15
plaintiff's advocate to the Defendant Nos.1, 2 and
3, dated 07.03.2023.
28.03.2023 Copy of 2nd Cease and Desist Notice sent by the Ex.P16
plaintiff's advocate to the Defendant Nos.1, 2 and 3
12.04.2023 Copy of reply issued counsel for Defendant Nos.1, Ex.P17
2 and 3
April 2023 Copy of Data taken from National Payment Ex.P18
Corporation of India (NPCI) showing the
transaction volume of the plaintiff
- Printout of Screenshots showing the listing of Ex.P19
Defendant No.1's app and downloads taken from
Google Play Store.
- Copy of Plaintiff's Registered Trademarks and Ex.P20
Domain names
- Copy of Defendant Nos.1 "Bundle Pe" and "LatePe" Ex.P21
marks and Domain names
20.12.2023 Original Board Resolution Ex.P22
13.05.2023 Copy of the certificate of Chartered Accountant Ex.P23
certifying Marketing expenditure and turnover of
the plaintiff's company
https://www.mhc.tn.gov.in/judis
Civil Suit (COMM DIV)No.119 of 2023
Defendant's witness:-
Nil
Documents exhibited on the side of the plaintiff during
Cross examination:-
Date Nature of documents Exhibits
01.02.2017 Communication received from The Registrar of Ex.D1
& Trade Marks, Chennai, dated 01.02.2017 and the
20.07.2017 plaintiff's application dated 20.07.2017
21/01/2025
(2/2)
https://www.mhc.tn.gov.in/judis
Civil Suit (COMM DIV)No.119 of 2023
P.VELMURUGAN, J
rns
Pre Delivery Judgment made in
Civil Suit (COMM DIV)No.119 of 2023
21/01/2025
https://www.mhc.tn.gov.in/judis
