Madras High Court: In a Trade mark dispute between digital payments applications “Phone Pe” and “Mobile Pe”, M. Sundar, J has temporarily restrained Mobile pay from offering Unified Payments Interface (‘UPI’) and Bharat Interface for Money (‘BHIM’), however, it can continue with all other business activities like wallet recharge etc.
Phone Pe submitted that the classes referred to in the eight legal use certificates are classes in International Classification of goods and services (‘NICE classification’). Further, the Trade mark Registry has neither ‘classified goods and services’ nor published an alphabetical index as per Sections 7 and 8 of the Trade Mark Act, 1999 (‘TM Act’)
The Court viewed that the classes referred to in eight legal use certificates as classes in ‘NICE Classification’ is prima facie acceptable, but this is a prima facie view subject to disputation and contestation, thus Phone Pe is a registrant / proprietor qua classes 9, 35, 36 and 38 vide subclasses.
It was also submitted that Phone Pe is the registered Trade mark. Further, Phone Pay has sent cease and desist notice to Mobile pe to not pursue its trade mark registration application, however, Mobile pe’s registration application was accepted by the registry this year.
The Court took note of Section 12-A of the Commercial Courts Act, 2015 (‘the Act’) and the Cease-and-Desist Notice dated 14.03.2022, and observed that the contemplation of urgent interim relief within the meaning of Section 12A is prima facie made out, but the rights of Mobile Pe and other defendants are protected to raise this issue, if so advised and if so desired post notice.
The Court placed reliance on Parle Products (P) Ltd. v. J.P. and Co., (1972) 1 SCC 618 , while comparing the two disputed trade marks “Phone Pe” and “Mobile Pe”, wherein it was held that “the disputed marks must be compared avoiding side by side comparison and stepping into the shoes of a man of average intelligence with ordinary prudence and imperfect recollection” and held that a prima facie case of possible deception has been made out as the logos of the two apps are deceptively similar.
It was also viewed that at this stage a limited order of status quo relating to UPI and BHIM alone would be granted, as Mobile pe is not into this activity yet. Therefore, due to a prima facie case, possible irreparable legal injury, and balance of convenience in favour of Phone Pe, the Court granted limited order of status quo in favour of Phone Pe.
[Phonepe (P) Ltd. v. Mobilepe E-Commerce (P) Ltd., 2022 SCC OnLine Mad 4989, decided on 19-10-2022]
