SUMMARY
The court dismissed PhonePe’s interim injunction application that sought to restrain BharatPe’s PostPe from using the brand name as it is similar to PhonePe's trademarks
The words ‘Phone’ and ‘Post’ have distinct dictionary meanings with no possibility of confusion between the two, the HC said
The judgement comes as a reprieve for BharatPe which has spent crores of rupees in branding exercise for its BNPL arm PostPe
In a major jolt to PhonePe, the Bombay High Court on Thursday (April 6) dismissed the digital payments giant’s trademark infringement plea against fintech startup BharatPe’s buy-now-pay-later (BNPL) arm PostPe.
Justice Manish Pitale dismissed PhonePe’s interim injunction application that sought to restrain PostPe from using the brand name citing similarity to PhonePe’s trademarks.
“… The plaintiff has, therefore, failed to demonstrate a prima facie case in respect of, both, infringement and passing-off in the context of its trademark ‘PhonePe’… In view of the above, the application is dismissed,” noted the Bombay HC in its judgement.
In its order, the court noted that PhonePe failed to make a strong prima facie case for grant of interim relief. The HC disagreed with PhonePe’s contention that ‘gullible or uneducated persons or even educated and aware customers’ would be confused between the services of the two parties.
Rejecting PhonePe’s contention that both trademarks had phonetic and structural similarity, the court observed that the term ‘Pe’ was widely used and alluded to ‘Pay’ in the domain in which both players were active.
“… The words, ‘phone’ and ‘post’ have distinct dictionary meanings with no possibility of confusion between the two. This Court does not find phonetic similarity between the two marks, for the plaintiff to claim that a strong prima facie case is made out to grant interim reliefs,” added the HC.
In its submissions, BharatPe argued that the term ‘PostPe’ was coined from the concept of postponed payment, alluding to customers being able to buy now and pay later. The fintech giant also said that it onboarded only customers with acceptable credit history and was distinct from the simple payment service through UPI and other modes provided by PhonePe.
The new judgement adds another flavour to the long standing dispute between BharatPe and PhonePe over the use of the suffix ‘Pe.’
The Fight Over ‘Pe’
This was not the first time when the two sides publicly sparred over trademark infringement. In 2018, PhonePe issued a cease and desist notice against BharatPe directing the latter to stop using the brand name BharatPe with ‘Pe’ written in Devanagari script.
Consequently, BharatPe stopped using the format for its brand name format and switched to using ‘BharatPe’ only for its services.
Later, PhonePe filed a plea in Delhi High Court in 2019 seeking an injunction order against BharatPe over the use of the suffix ‘Pe.’ Back then, it claimed that the suffix ‘Pe’ had acquired distinctiveness to the extent that consumers would invariably associate ‘Pe’ with PhonePe. .
Subsequently in 2021, PhonePe filed a commercial intellectual property (IP) infringement suit against BharatPe for registration of the trademark ‘PostPe’ and its other variations.
The judgement comes as a relief to BharatPe which has spent crores of rupees for publicising and marketing its BNPL product.
It must be noted that former BharatPe MD Ashneer Grover’s recently-launched fantasy gaming platform CricPe also uses the suffix ‘Pe’. Speaking about it, Grover told Inc42 in a recent interview, “I actually fought cases and ensured that there is no monopoly on the word ‘Pe’, including against PhonePe. Secondly, this is about what CrickPe will offer — i.e. we pay cricketers.”
The latest development comes amidst a slew of trademark infringement cases involving new-age tech startups and big tech giants.
Earlier this week, the Delhi High Court directed consultancy firm Google Enterprises to pay INR 10 lakh to tech major Google LLC for misusing Google’s trademark. Prior to that, Inc42 also reported how Zomato-owned quick commerce platform Blinkit was locked in a trademark infringement case with a Bengaluru-based IT company called Blinkhit.
Earlier, audio streaming platform Kuku FM signed a settlement agreement with competitor Pocket FM after a seven-month-long legal dispute involving Kuku FM publishing audio summaries of a few books that Pocket FM owned the exclusive licence for.
