Can exclusivity be claimed for imaginative spelling?

By Aprajita Nigam and Aarushi Mishra, LexOrbis
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In the recent case of PhonePe Private Limited v Ezy Services & Anr, the Delhi High Court ruled that the plaintiff could not claim exclusivity for a descriptive mark, or a descriptive part of the mark, even if the mark or part of it appeared unique because it was deliberately misspelled.

Aprajita Nigam, Managing associate, LexOrbis
Aprajita Nigam
Managing associate
LexOrbis

The plaintiff and defendant were both online payment service providers. The plaintiff claimed that the defendant’s use and registration of the mark BharatPe infringed the plaintiff’s registered mark PhonePe and amounted to passing off. The plaintiff sought a permanent injunction against the defendant to stop the use of the identical suffix -Pe in its trademark.

The plaintiff alleged that -Pe is an invented word, and when combined with the first word of the mark, that is the word Phone, a common dictionary word, the suffix -Pe, highlighted by the capital P, is the dominant and distinguishing element of the whole mark PhonePe. The plaintiff claimed that it had coined and adopted the mark PhonePe in 2015 and had used it since then. The plaintiff was therefore the prior user of the mark. The plaintiff also placed on record evidence of use. The plaintiff further argued that the suffix -Pe, common to both marks, would create the impression of an association between the two marks in the mind of a consumer of average intelligence and imperfect recollection, especially as the services provided by both parties were the same.

The defendant argued that the plaintiff was not the prior user and adopter of the suffix -Pe. The defendant had been using its mark “BharatPe” since August 2016. The defendant argued that the marks must be compared as a whole, and that the plaintiff could not claim infringement and passing off solely on the basis of the use of the suffix -Pe. The defendant contended that the dominant elements of the two marks were the words Phone and Bharat, which were dissimilar. The overall comparison of the marks showed them to be distinctively different. The defendant also stated that the suffix -Pe had not yet gained a secondary meaning, and that this was a matter to be determined at trial. Finally, the defendant said that the suffix or its variant end word, Pay, were very common, as evidenced by Unified Payments Interface-based applications such as Google Pay, Amazon Pay, Samsung Pay and WhatsApp Pay.

Aarushi Mishra, Associate, LexOrbis
Aarushi Mishra
Associate
LexOrbis

The court relied on provisions of the Trade Marks Act, 1999, such as sections 17, 9, 29, and 34, as well as on cases such as Marico, Pidilite Industries, PP Jewellers, Kaviraj Pandit Durga Dutt Sharma, PK Overseas Pvt Ltd and the English case of In re Pianotist Application to rule in favour of the defendant. The court adopted the starting point of the well-known and fundamental principle that exclusivity can only be claimed in respect of an entire mark. The plaintiff could, however, assert infringement of a part of a mark if such part was the dominant or essential part of that mark.

The high court went on to accept that exclusivity cannot be claimed for a descriptive mark or descriptive part of a mark even if it is misspelled. The exception to this principle is when the descriptive mark or descriptive part of the mark has acquired a secondary meaning, that is the mind of the consumer immediately links the mark or its descriptive part to its proprietor. The plaintiff must, however, prove such a secondary meaning by evidence at trial.

The court then applied these principles to the case. The suffix -Pe, as used by the plaintiff, means pay, which distinctly describes the service that each party provided. The adaptive spelling or misspelling of pay as -Pe did not allow the plaintiff to claim exclusivity over it. Further, the plaintiff had not shown that the suffix had acquired a secondary meaning. Lastly, the overall comparison of the marks showed that there was no deceptive similarity. The plaintiff’s application for an injunction was therefore dismissed.

The high court has upheld and further explained the established principles in this area of intellectual property law, such as exclusivity being allowed only for entire marks, and the anti-dissection rule. It has also delivered an important ruling, and provided much-needed clarification with respect to misspelled descriptive marks and to the descriptive parts of marks.

Aprajita Nigam is a managing associate and Aarushi Mishra is an associate at LexOrbis

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