In the matter of PhonePe Private Limited v BundlePe Innovations Pvt. Ltd.[Civil Suit (COMM DIV) No.119 of 2023], a Single Judge [P. Velmurugan, J.] of the High Court of Madras, vide judgment dated January 21, 2025, rejected the Plaintiff’s claim of permanent injunction and held that mere use of common suffix “Pe” in Defendant’s domain names viz. “https://bundlepe.com/” & “https://latepe.in/” and Plaintiff’s domain name “phonepe.in”, does not amount to deceptive similarity as there is lack of substantial evidence of actual confusion or any harm to Plaintiff’s brand.

Section 2(1)(h) of the Trademarks Act, 1999 (“the Act”) states that “A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.” The issue was whether the use of a common suffix in Defendant’s domain name could result in deceptive similarity.

The Plaintiff contended that its domain name “phonepe.in” and Defendant’s domain names “https://bundlepe.com/” & “https://latepe.in/” encapsulates a common suffix “Pe”, which increases the likelihood of confusion in the minds of consumers. The Plaintiff further argued that this would have a detrimental impact on their brand name and goodwill and sought an injunction to prevent the Defendant from using any deceptively similar domain name that would create an impression of association with Plaintiff.

The Defendant contended that their domain names “https://bundlepe.com/” & “https://latepe.in/” are entirely different from the Plaintiff’s domain name “phonepe.in”. The inclusion of the words “Bundle” and “Late” sufficiently differentiates the domain name of Defendant from that of the Plaintiff and prevents any likelihood of confusion among the consumers. Moreover, the Defendant contended that domain names are not deceptively similar and have been independently registered for their business activities.

The Court rejected Plaintiff’s contention and pointed out that “The word “Pe” denotes a common suffix in the digital payment industry and does not, on its own, create confusion. The Plaintiff must demonstrate that the defendants’ domain names have caused, or are likely to cause, confusion among consumers. However, the Plaintiff did not provide substantial evidence to show that consumers were actually confused or misled by the Defendants’ domain names. There were no consumer complaints or evidence of lost business due to the Defendants’ domain names. In the absence of such evidence, the Court found no justification for granting an injunction”.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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In the matter of Adidas AG v. Keshav H. Tulsiani & Ors. [CS(COMM) 582/2018], a Single Judge [Sanjeev Narula, J.] of the High Court of Delhi, vide judgement dated July 19, 2024, granted a permanent injunction in favor of the Plaintiff and held that invented and highly distinctive trademarks, such as ADIDAS, warrant stronger legal protection, as such marks are unlikely to be adopted innocently and demand a broader ambit of safeguarding under trademark law.

Section 29(2)(a) of the Trade Marks Act, 1999 states “A registered trademark is infringed by a person who…uses in the course of trade, a mark which because of – (a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark… is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.” The question of law in this case was whether the replication of a unique and globally recognized mark like ADIDAS suffices to establish infringement even without evidence of actual confusion, as long as the likelihood of confusion and dilution is evident.

The Plaintiff argued that the Defendants’ use of the identical mark ADIDAS for textiles under Class 24 created a high likelihood of consumer confusion, diluted the distinctiveness of its mark, and infringed upon its exclusive rights. The Plaintiff emphasized that ADIDAS is an invented and highly distinctive term with no inherent meaning, warranting maximum protection under trademark law.

The Defendants contended that their adoption of ADIDAS was honest and culturally motivated, citing Sindhi terms meaning “devotee of elder sister.” They further argued that their use of the mark in uppercase letters distinguished it from the Plaintiff’s stylized lowercase mark.

The Court acknowledged that coined terms with no inherent linguistic meaning like ADIDAS are highly distinctive and the likelihood of confusion or deception among the public can be presumed when such a mark is replicated by another party, and held that, “Given the identity of the marks, the allied nature of the goods under Classes 24 and 25, and the significant overlap in trade channels, there is a high likelihood of confusion among consumers. The Defendants have not provided evidence to counter this presumption of confusion or to show honest and distinct commercial use. Therefore, based on the statutory provisions of Section 29(2)(a) of the Act and the factual circumstances of this case, the use of “ADIDAS” by the Defendants on textiles meets the criteria for trademark infringement.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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In the matter of Lacoste S.A. v. Crocodile International Pte Ltd. [CS (COMM) 1550/2016], a Single Judge [Sanjeev Narula, J.] of the High Court of Delhi, vide judgement dated August 14, 2024, permanently injuncted the Defendants from infringing the Plaintiff’s “Crocodile” device and held that initial interest confusion as a result of substantial similarities between the marks constitutes trademark infringement.

Section 2(1)(h) of the Trade Marks Act, 1999 defines the term “deceptively similar” — “A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.” The key question of law in this case was whether initial interest confusion—a momentary consumer misidentification at first glance—suffices to meet the threshold for deceptive similarity.

The longstanding dispute between Lacoste and Crocodile International in India, spanning over two decades, is part of a broader global conflict between the two companies over their competing crocodile logos. The Plaintiff, filed the present suit in 2016, seeking a permanent injunction to restrain the Defendant from using a left-facing crocodile logo on apparel and accessories, arguing that it infringed on Lacoste’s distinctive trademark.

The Plaintiff claimed that the similarities between the two-crocodile logos, despite facing different directions, created confusion among consumers, especially as both companies operated in the apparel market. Whereas the Defendant contended that the opposite orientation of its crocodile logo sufficiently distinguished it from the Plaintiff’s  logo and was unlikely to cause confusion.

The Court acknowledged the principle of “initial interest confusion” as grounds for trademark infringement under Section 29(1) of the Trade Marks Act, 1999 in this case, and held that, “Despite the apparent lack of supporting evidence, the Court finds that the striking resemblance between Lacoste’s crocodile mark and the Annexure-A device across multiple key visual aspects, augments the prospects of ‘initial interest confusion.’ This means that an average consumer might initially believe that the goods are from Lacoste based on the prominent and recognizable features of the impugned mark, even though this confusion may not persist throughout the transaction. Thus, this substantial resemblance strongly supports a finding of deceptive similarity.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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In the matter of Visa International Ltd. v. Visa International Service Association & Anr.  [IPDTMA No. 82 of 2023], a Single Judge (Krishna Rao, J.) of the High Court of Calcutta vide order dated August 02, 2024, allowing a writ petition, has held that contractual staff hired in the Trade Marks Registry can only discharge administrative functions on behalf of the Registrar, and not quasi-judicial functions like issuing orders in an application.

Section 3(2) of the Trade Marks Act, 1999 (“the Act”) states that “The Central Government may appoint such other officers with such designations as it thinks fit for the purpose of discharging, under the superintendence and direction of the Registrar, such functions of the Registrar under this Act as he may from time to time authorise them to discharge” The issue was whether the provision is intended solely to empower the delegation of administrative authority and not quasi-judicial power.

The Appellants argued on the ground that the Associate Managers of Trade Marks who have passed the orders in their applications were neither authorized under law nor competent to pass such order. The Respondent placed on record an officer order directing the Registrar’s functions to be delegated through the e-module of the TMR System, following the CGPDTM’s powers.

Accepting the arguments of the Appellants, the Court held that Section 3(2) of the Act is only intended to empower the delegation of administrative power and not quasi-judicial power. The Court stated that “The use of expression with such designation as it thinks fit indicates that there are no fetters or limitations with regard to designations of the officers appointed by the Central Government for the said purpose. The Central Government may appoint officers of any designation to perform the functions of the Registrar. Sub-Section (2) of Section 3 prescribes the requirement that the other officers appointed to discharge the functions of the Registrar are required to function under the superintendence and direction of the Registrar. The quasi judicial functions are required to be performed independently and not subject to the superintendence or direction of any other person including the Registrar. Sub-Section (2) of Section 3 is only intended to empower the delegation of administrative power and not quasi judicial power.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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In the matter of Mr. Amrish Aggarwal Trading as Mahalaxmi Product v. M/s Venus Home Appliances Private Limited & Anr [2024:DHC:3911-DB], a Division Bench (Yashwant Varma, J and Ravinder Dudeja, J) of the High Court of Delhi, vide judgment dated May 17, 2024, held that the Court had to mandatorily stay the infringement suit if a party files rectification petition after pleading invalidity.

Section 124(2) of the Trade Marks Act, 1999 [“The Act”] states that in a suit for infringement, where invalidity of either party’s registration is pleaded and “if the party concerned proves to the court that he has made any such application as is referred to in clause (b) (ii) of sub-section (1)…the trial of the suit shall stand stayed until the final disposal of the rectification proceedings”. The question that arose was whether a filing of a rectification petition by one of the parties in the suit would ipso facto result in a stay of the suit proceeding.

The Petitioners argued that doing away with the requirement of stay was correct in law. They also submitted that the Delhi High Court, being vested with the discretion to consolidate proceeding under Intellectual Property Division Rules, obviated need for a stay in the suit proceeding.

The Respondents however submitted that a textual interpretation of Section 124 of The Act would lead to the inevitable conclusion that the abolition of the IPAB would not eliminate the need for a stay of suit proceedings. The Respondents further submitted that the same position of law was also already clarified by the Supreme Court previously. Members of the bar, upon Court’s invitation, also made similar submissions.

The Court reiterated that, “The provision clearly and categorically envisages stay of the suit pending disposal of the rectification proceedings, even where the rectification proceedings are to be instituted before the High Court.” Further adding that Section 124(2) ipso facto stays the suit, by legislative fiat, on a rectification petition being filed. There is no requirement of any orders being passed by the Court for the suit to be stayed. The stay of the suit is an inexorable legislative consequence to the filing of the rectification petition.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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