Delhi HC sets aside BharatPe’s petitions to cancel PhonePe’s ‘Pe’ trademark

The Delhi HC set aside the petition in view of a pending case of trademark infringement between the two firms in front of another bench in the same court.

“…in view of the provisions of Section 124, it is clear that the present petitions could not have been filed without the court framing an issue regarding the validity the Trademark in (CS (COMM) 292/2019), as held by the Supreme Court in Patel Field Marshal Agencies (supra),” the Delhi HC said.

“For the aforesaid reasons, the present petitions are dismissed alongwith the pending applications,” the court said.

In a statement on Friday, PhonePe called the dismissed petitions filed by BharatPe as “frivolous and baseless.” The Walmart-backed fintech in its statement added that BharatPe’s petitions were “nothing more than a poor attempt to divert the court’s attention from its own misuse and infringement of PhonePe’s trade marks.”

As part of an ongoing row between the two digital payments firms, BharatPe last month had filed petitions to scrap multiple registrations held by PhonePe Pvt. Ltd. for the ‘Pe’ device mark in Devanagari script.

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The latest development is another sign of growing tension between the two firms over the last few years over the usage of the word ‘Pe’ (pronounced as Pay).

Last month, in a seperate case the Bombay High Court had rejected PhonePe’s assertion of exclusivity over the word “Pe” at the interim stage. PhonePe had filed a fresh lawsuit against BharatPe’s ‘buy now, pay later’ (BNPL) app PostPe for trademark violation. The Bengaluru-based startup had approached the Bombay HC seeking an injunction to restrain Resilient from using PhonePe’s registered trademarks by using and promoting the marks “PostPe” or “postpe”. In response to this injunction, BharatPe had filed its cancellation petitions at the Delhi HC.

Both PhonePe and BharatPe’s PostPe are on an aggressive marketing drive with television ads being aired during the ongoing T20 World Cup as well.

“Being in the similar line of business, it is imperative that the earlier use and substantive meaning acquired by Pe in PhonePe is accepted and cannibalizing PhonePe’s large customer base by deceptively similar marks and infringement be stopped immediately,” PhonePe said in its statement on Friday.

“We will continue to earnestly press the other matters filed by us before the Hon’ble Delhi High Court and the Hon’ble Bombay High Court against Resilient Innovations’ dishonest adoption of the ‘BharatPe’ and ‘PostPe’ marks to create brand confusion in the Digital Payments category and take all steps necessary to protect the value of our brand,” the firm said.

Earlier this year in April, the Delhi HC had rejected PhonePe’s seperate interim injunction plea against BharatPe claiming exclusivity over the word “Pe”. This matter is now part of trial as PhonePe did not wish to press on the appeal on injunction and sought a final settlement through a trial.

PhonePe had said last month that while it withdrew the lawsuit, the Bombay HC had granted it the liberty to file a fresh case in this matter keeping the rights and contentions of the parties open.

Earlier at the time of filing of the cancellation petitions, BharatPe has said that PhonePe’s trademark of the word ‘Pe’ is “against the larger public interest.”

“By taking on a trademark for the “Pe” device mark in Devanagari Script in classes relating to payment services in a country like India, where Hindi is the primary language of the masses, PhonePe has acted against the larger public interest, and Resilient is committed to undoing this,” a spokesperson for BharatPe had said on October 26 when the petitions were filed.

“PhonePe has been asserting its registration for the “Pe” device mark in Devanagari script as being equivalent to the English word Pe/Pay. This was the same position taken by PhonePe in a recent case filed by it before the Bombay high court against Resilient’s use of the mark “Postpe”, which stands withdrawn at present,” as per BharatPe’s statement.