Law & Practice

INDIA: Rights in Misspelled Trademarks—PhonePe vs. BharatPe

Published: June 9, 2021

Udayvir Rana Remfry & Sagar Delhi, India

Verifier

Mathews Cherian Verghese Inttl Advocare Delhi, India Trademark Office Practices Committee—India IPO Subcommittee

In a suit before the High Court of Delhi, PhonePe Pvt. Ltd. (plaintiff) claimed passing off and infringement of its PhonePe mark by Ezy Services & Anr. (defendants) for the adoption and use of the BharatPe mark for identical services. The court found no deceptive similarity, and on April 15, 2021, refused an interim injunction sought by the plaintiff. Phone Pe Pvt. Ltd. v. Ezy Services and Anr., CS (COMM) 292/2019.

The plaintiff claimed adoption and use of the PhonePe mark since 2015 for an online payment portal. It argued that the word “Pe” was a fanciful term derived from the dictionary word “pay” and constituted the dominant and essential feature of its registered PhonePe trademark (Registration No. 3221673). Further, the defendants’ use of the capital letter “P” in “Pe”—thus emphasizing the “Pe” suffix—made its BharatPe mark deceptively similar to PhonePe.

The defendants asserted that: (1) competing marks must be viewed in their entirety; (2) several “Pe” formative marks registered by third parties co-existed on the register; and (3) the plaintiff could not claim exclusive rights over the word “Pe” per se, particularly as it did not use this term on a standalone basis to denote its services.

The judge agreed that “Pe” was a misspelling of the word “pay.” He further stated that infringement could be asserted on the ground that “a part of the mark had been copied,” provided the copied part was the dominant part or essential feature of the trademark in question. Most importantly, a user can exclusively hold a descriptive mark or part of a mark only if the mark had acquired a secondary significance; that is, the secondary meaning had entirely displaced the primary descriptive meaning of the mark, resulting in the mark becoming identified exclusively with particular goods or services.

As per the court, such secondary meaning with regard to the suffix “Pe” had not been established at the interim stage and the matter was one for trial. Finding no deceptive similarity, it denied the interim injunction.

The plaintiff may challenge this order before a two-judge bench of the Delhi High Court or look to conclusion of the main suit to resolve the dispute. Either way, establishing secondary meaning casts a high evidentiary burden, and it remains to be seen if the plaintiff will be able to make such a case based on extensive use, sales figures, or public surveys.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2021 International Trademark Association