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June 17, 2021

Court Case Bulletin (CCB): No Exclusivity can be Claimed Over a Part of a Registered Trademark

Author: Intern - Devu Sai Ruchitha

In the matter of Phonepe Private Limited Vs. Ezy Services and Ors. [2021 SCC OnLine Del], a single-judge ( C. Hari Shankar, J.) of the Delhi High Court vide an order dated April 15, 2021 declining an interim injunction, has held prima facie that exclusivity cannot be claimed over a part of a registered mark.

The suit claims that the mark “BharatPe” infringes the registered trademark “PhonePe” especially because “Pe” is an invented word as it is not found in the English dictionary and is an essential and dominant feature of the composite trademark “PhonePe”. The defendants claim that the plaintiff is not the registered owner of the words “Pe” or “Pay”. Rather, the plaintiff has only registered the whole word “PhonePe”. The defendants place reliance on Section 15 and 17 of the Trademarks Act, 1999, contending that the comparison of competing trademarks must be as a whole and should not be dissected. 

Section 17 of the Trademarks Act, 1999 states that “(1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole.”(2) Notwithstanding anything contained in sub-section (1), when a trade mark–(a) contains any part–(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or (ii) which is not separately registered by the proprietor as a trade mark; or (b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered. The question that arises is whether taking a trademark as a whole without exclusivity to any part of it prevents identification of and attention to a dominant and essential feature.  

The court observed that both the marks “Phone Pe” and “Bharat Pe” are composite marks. Applying the Anti-Dissection Rule, the court held that “there is no infringement that can be claimed on the basis of part of the registered trademark, the plaintiff cannot claim exclusivity solely over the suffix “Pe” and can only do it with respect to the entire mark”. The court also took notice of the fact that the plaintiff and the defendants were involved in different kinds of services and that the customers know the prima facie difference between the two. It said that that the trademarks of plaintiffs (Phone Pe) and the defendants (Bharat Pe) are not deceptively or confusingly or phonetically similar barring the common suffix “Pe”.

Accordingly, the court had held “Had, instead of “Pe”, the plaintiff used the suffix “Pay”, i.e. had its registered trade mark been “PhonePay”, the plaintiff would clearly not have been able to claim any exclusivity, over the “Pay” suffix, or bring a case for infringement against the defendants, had their trademark been “BharatPay”. By misspelling “Pay” as “Pe”, the legal position cannot change. The plaintiff would, therefore, be as entitled to claim exclusivity over the suffix “Pe”, as it would have been, had the suffix in its trademark been “Pay”.”

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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