Bombay High Court: G.S. Patel, J., granted ‘conditional’ liberty to Phonepe (P) Ltd. to withdraw its suit and an interim application filed against the use of mark POSTPE by Resilient Innovations (P) Ltd. However, before granting leave to withdraw, the Court passed a reasoned order and decided not to delete those reasons “only because an application for withdrawal is being made at this very late stage”.
Present application sought the protection of the plaintiff’s mark PHONEPE and competing mark by the defendant was POSTPE.
It was stated that the defendant’s mark was used in respect of what was said to be the equivalent of a digital credit card rather than the traditional UPI-based debit card system used by the plaintiff.
It was noted that plaintiff attempted to claim some sort of exclusivity or distinctiveness in a part of its mark i.e. “PE”.
Court disagreed with the Senior Advocate Dr Saraf with his stands that i.e. taking PHONEPE as a whole while simultaneously claiming similarities in the use of PE are not mutually contradictory or not inconsistent.
Further, the Bench elaborated stating that plaintiff has no registration of the word mark PE per se.
Plaintiff has a label or device mark with the Devanagari word PE. It claimed that ‘Phone’ is not unique or distinctive, and that the word PE is distinctive, and is a central, leading and memorable feature. It then claimed that the Defendants’ use of PE is an infringement. But if the law is that the ‘mark must be taken as a whole’, then one must look at PHONEPE and set it against POSTPE. Then one would test for visual, structural and phonetic similarity. But except for one line in one paragraph, the plaint only draws a comparison between the rival uses of PE, clearly claiming exclusivity over that expression disconnected from the ‘mark taken as a whole’.
High Court added to its analysis, that it is one thing to say that the defendant’s mark, taken as a whole is too close to the plaintiff’s mark, also taken as a whole. But it is quite another to take an element of each, which cannot possibly be the subject of exclusivity, and then claim injunctions on that basis.
Dr Saraf, Senior Advocate sought leave to withdraw the suit and the IA with liberty to file a fresh suit restricting the claim to the mark PHONEPE taken as a whole.
Bench granted the liberty conditionally, i.e. not only keeping all contentions open on behalf of the defendants but also giving the defendants liberty to rely on the present plaint and the instant order in opposition to any fresh suit or IA inter alia to contend that the plaintiff has taken different stands at different time and in different courts. [Phonepe Pvt Ltd. v. Resilient Innovations Pvt. Ltd., Leave Petition (L) No. 24140 of 2021, decided on 22-10-2021]

Advocates before the Court:
Dr Birendra Saraf, Senior Advocate, with Hiren Kamod, i/b J Sagar Associates, for the Plaintiffs.
Mr Viraag Tulzapurkar, Senior Advocate, with Nishad Nadkani, Shailendra Bhandare, Mohit Goel, Siddhant Goel, Deepankar Mishra, Aditya Goel and Khushboo Jhunjhuwala, i/b M/s. Khaitan & Co, for the Defendants.

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