On Thursday, the Bombay High Court declined to award PhonePe Pvt Ltd temporary relief in its lawsuit against Resilient Innovations Pvt Ltd over alleged trademark infringement and passing-off. The buy-now, pay-later smartphone app “PostPe” is run by New Delhi-based Resilient Innovations
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Details of the case
PhonePe Private Limited … Applicant
In the matter between
PhonePe Private Limited … Plaintiff
Vs. Resilient Innovations Private Limited … Defendant
Issues:
The Bombay HC was asked to decide whether an appeal against an order passed under 23 Rule 1(3) of the CPC allowing withdrawal of a suit with liberty to file a fresh suit was maintainable u/s 13 of the Commercial Courts Act, 2015 (“Commercial Courts Act”). The Court considered two issues: whether the principle of ‘prosecution history estoppel’ was applicable in the present case, and whether the earlier legal proceedings between the parties were relevant. The Court opined that the plaintiff disentitled itself from grant of discretionary reliefs under Order XXXIX, Rules 1 and 2 of CPC, and that prejudice was caused to the defendant. Therefore, the plaintiff cannot successfully claim discretionary reliefs in the backdrop of such conduct.
Contention raised by plaintiff
Mr. Ravi Kadam, learned senior counsel appearing for the plaintiff, argued that the plaintiff claims infringement of its registered trademark ‘PhonePe’ taken as a whole, when compared with the trademark of the defendant ‘postpe’. He invoked the Pianotist test approved by the Supreme Court and the law laid down by the Division Bench of this Court in Hiralal Parbhudas Vs. Ganesh Trading Company and others, AIR 1984 Bom. 218. He also argued that both the parties were providing financial services and that the target customers were the same. The Supreme Court relied on the judgement of Gorbatschow Wodka KG Vs. John Distilleries Limited, Ranbaxy Laboratories Vs. Universal Twin Labs, and Satyam Infoway Vs. Siffynet Solutions to argue that immense goodwill was created in favour of the plaintiff.
As the Apex Court laid down in Ruston & Hornsby Ltd. vs The Zamindara Engineering Co., (1969) 2 SCC 727, was also invoked. The Delhi High Court granted interim reliefs to the defendant in the context of the rival mark ‘BharatPe’ of the plaintiff. The defences raised on behalf of the defendant are unsustainable, the allegation of forum shopping is misplaced, the plaintiff has registration for its trademark and its variants from March, 2016 onwards, and the plaintiff enjoys proprietary rights as a consequence of grant of registration. On this basis, the application deserved to be allowed.
Contentions raised by the defendant
Mr. Sharan Jagtiani, learned senior counsel for the defendant, argued that the present suit was not filed on a clean slate and that the shifting of stands on the part of the plaintiff can be appreciated only after looking at the previous legal proceedings. He also cited the judgement and order passed by the Delhi High Court, while rejecting the application for interim reliefs filed on behalf of the plaintiff. The plaintiff had also suppressed its own stand before the Registrar of Trademarks when it applied for registration of the mark ‘PhonePe’. The plaintiff had claimed that its mark ‘PhonePe’, taken as a whole, was distinguishable even when compared to such marks. However, the comparison of the two marks did not prima facie show any similarity or deceptive similarity.
In F. K. Sachdeva and others v. Shri Educare Limited, 2016 (65) PTC 614, the Supreme Court’s rulings were cited.(Del). The trademark of the plaintiff ‘PhonePe’ does not have any distinctiveness for the reason that the plaintiff cannot claim any exclusivity in using ‘pe’ and that the word ‘phone’ is a dictionary word.
Judgement:
The Bombay High Court heard the submissions made by Senior Advocate Mr. Darius J. Khambatta on behalf of PostPe and Senior Advocate Mr. Janak Dwarkadas, instructed by us, on behalf of PhonePe. The Bombay High Court dismissed the Appeal on the grounds of maintainability.
The Bombay High Court held that the Appeal was not maintainable under Section 13 of the Commercial Courts Act as the Impugned Order was not a “decree” as defined under the Section 2(2) of the CPC. It was held that a liberty granted to file a fresh suit under Order 23 Rule 1(3) of the CPC is not an adjudication that conclusively determines the rights of parties in respect of any matter in controversy. It went on to say that the term “substantive and procedural rights” of parties has been said to refer to the phrase “rights of the parties with regard to all or any of the matters in controversy in the suit” found in Section 2(2) of the CPC under the definition of “decree.”
Name Sarah Garima Tigga Semester : VI,COLLEGE: symbiosis law school pune
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