Suit filed by Phonepe Private Limited on Trademark Infringement by Mobilepe Fintech Private Limited
1. Whether Trademark Act, 2017 is operating or not, when the Fourth Schedule to Trademark Rules, 2002 has been omitted, is the question before the Hon’ble Court.
2. Further, one more question arose before the Hon’ble Court was regarding the publication of class-wise and an alphabetical index of Goods and Services of Indian origin vide sub-rule (2) of Rule 20 of the Trademark Rules, 2017 i.e., whether such publications have been made.
3. Further, the Hon’ble Court wanted to know the meaning of the classes mentioned in Trademark Registration Certificates.
1. Section 20 of the Trademark Rules, 2017 deals with the Classification of goods and service as under:
(1) Classification of goods and service for the purpose of registration of trademark, the goods and services shall be classified as per current edition of “the International Classification of goods and services (NICE classification)” published by the World Intellectual Property Organisation (WIPO).
(2)The Registrar shall publish a class wise and an alphabetical index of such goods and services, including goods and services of Indian origin.
2. Section 7 of the Trademark Act, 1999 deals with the classification of the Goods and Services by the Trade Marks Registrar; further if any question arises in the class within which any goods or services falls shall be determined by the Trade Marks Registrar. The Decision made by the said Registrar would be deemed final.
3. Section 8 of the Trademark Act, 1999 deals with the publication of the alphabetical index of the List of Goods and Services by the Trade Mark Registrar, which is referred to in section 7 of the same Act.
4. Section 12A of the Commercial Courts Act, 2015 deals with the Pre-Institution Mediation and Settlement. It mentions that a suit, which does not contemplate any urgent interim relief under the Commercial Courts Act, 2015, must go through the pre-institution mediation and settlement process. The Central Government may authorise the Authority constituted under the Legal Service Authorities Act, 1987 vide notification in the official gazette. The Aforesaid Process must be completed by the authority in the period of three months from the date of application by the plaintiff. This said period can be extended by two months with the consent
of both the parties.
The Present Suit has been filed by PHONEPE PRIVATE LIMITED against
1) MOBILEPE E-COMMERCE PRIVATE LIMITED,
2) MOBILEPE FINTECH PRIVATE LIMITED,
3) MOBILEPE SOFTECH PRIVATE LIMITED,
4) MOBILEPE DIGITAL PRIVATE LIMITED,
5) SHARMISTA TRADINGS PRIVATE LIMITED,
6) MR. KRISHANAN CHOUDHARY,
7) GO DADDY OPERATING COMPANY LLC,
8) GO DADDY INDIA DOMAINS AND HOSTING SERVICES PRIVATE LIMITED
9) GOOGLE LLC
10) Apple Inc
The said case was first lodged by the Plaintiff for the Pre-Institution Mediation and Settlement, which is mandatory under Section 12A of the Commercial Courts Act, 2015. The suit was filed for the reliefs for Infringement of Registered Trademark by the Plaintiff. But the Authority issued the Cease and Desist Notice, which showed the failure of the mediation process. Therefore, after the procurement of Leave to Sue, the Plaintiff filed a suit before the Madras High
Court for further reliefs.
The Plaintiff claims in the Plaint filed by them that the Respondents have infringed their trademark under Classes 9, 35, 36, 38, and 42 of the fourth schedule of the Trademark Rules, 2002. There were nine trademark registration certificates filed by the Plaintiff as Exhibits, under which eight were Legal Use Certificates and one was RG-2 (RG-2 is Form Number and it cannot be used in Legal Proceedings).
It was further submitted by the Plaintiff that the classes referred to in the eight
legal use certificates are the classes in International Classification of Goods and Services (NICE Classification) which is explained in section 7 and 8 of the Trade
Marks Act, 1999, which explained above. It was submitted that the Trademark Registry has neither ‘classified goods and services’ nor published an alphabetical index of the said classification as mentioned in Section 7 and * of the Trade Mark Act, 1999. The Hon’ble Court has prima facie accepted the classes referred to in the eight Legal use Certificates as “NICE Classification” but this is a prima facie view which is subject to disputation and contestation if any.
This means that the Plaintiff is a registrant / proprietor of classes 9, 35, 36 and 38 vide sub-classes.
a. In class 9, Sub-classes are
I. 090717 which deals with computer software applications,
II. 090791 which deals with computer software platforms, recorded or
III. 090591 which deals with computer software, recorded;
b. in class 35, Sub-class is 350166 which deals with business consulting
services for digital transformation;
c. in class 36, Sub-classes are
I. 360128 which deals with e-wallet payment services,
II. 360058 which deals with electronic funds transfer; and
d. in class 38, Sub-classes are
I. 380022 which deals with communications by cellular phones
II. 380023 which deals with communications by computer terminals
The Sub-classes mentioned above are according to the ‘NICE Classification’.
The Hon’ble Court compared the two marks by applying the Parle Principle, which was laid down by the Hon’ble Supreme Court in Parle Products (P) Ltd. Vs. J.P. and Co. [(1972) 1 SCC 618] i.e., avoiding side by side comparison, stepping in the shoes of a man of average intelligence with ordinary prudence and imperfect recollection.
A prima facie case of possible deception had been made out. It has been noted that this was just a prima facie view which is subject to contestation. The Hon’ble Madras Court had staged a limited order of status quo of ‘UPI(Unified Payments Interface)’ and ‘BHIM (Bharat Interface of Money)’, which are both brands of ‘Payment Financial Services’. Status Quo means to maintain the status/state of the property, or matter in question. If in a Property Suit an order to maintain the Status Quo has been passed, then you can’t sell, sublet, lease or do anything with the property. You have to keep the property as it was on the date of passing of the order.
The order of Status Quo was passed because it was brought to the attention of the Hon’ble Court that Respondents 1 to 6 are not as of yet involved in the aforesaid services of ‘UPI’ and ‘BHIM’, but had developed application for the said services. Therefore, a prima facie case of possible irreparable legal injury under the aspect of ‘Payments and Financial Services’ was made out.
The Hon’ble Court came to a conclusion that if the Respondents No. 1 to 6 were allowed to continue their services, then it would cause the Plaintiff an irreparable legal harm. Therefore, the Hon’ble court passed the order of Status quo to stop the harm that the Plaintiff would suffer. That means the Respondent No. 1 to 6 were ordered to not to start any services related to ‘UPI’ or ‘BHIM’ payment services.