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The Delhi High Court has dismissed half a dozen petitions filed by Resilient Innovations, the company that owns the BharatPe digital payments platform, which sought an order to the Registrar of Trademarks to cancel the 'Pe' device mark registrations of rival PhonePe.

Justice Asha Menon disposed of the petition citing that a prior suit was pending between the same parties. The Court stated that in terms of the provisions of Section 124 of the Trademarks Act, 1999, no application has been moved before that Court seeking permission to file the present rectification petitions.

Resilient Innovations Pvt Ltd., the parent company which owns Delhi-based financial services platform, BharatPe, had filed rectification petitions against multiple registrations held by PhonePe Pvt. Ltd. in the last week of October, for the ‘Pe’ device mark in Devanagari script before the Intellectual Property Division of the Delhi High Court.  

In the instant case, Senior Counsel Rajshekhar Rao, appearing on behalf of the petitioner tried to distinguish between the two petitions by submitting that the cause of action in present petition was based on the registration of “Postpe” while the previous suit related to “BharatPe.”

The Court observed that “the present petitioner has itself raised objections with regard to the registration of the Words “Pe”, “पे” , “Pay” or “PhonePe” etc. being laudatory and descriptive of the services that were being provided by the plaintiff in that case, namely, the respondent no.1 before this Court.”

Senior Advocate Sandeep Sethi, appearing for the respondent contended that in absence of permission from the Civil Court, the present petitions were invalidly filed. 

Sethi further relied on Patel Field Marshal Agencies v. P.M. Diesels Ltd., wherein it was held that “the Tribunal will however come into seisin of the matter only if the civil court is satisfied that an issue with regard to invalidity ought to be framed in the suit.”

The High Court found that in the written statement filed in the original suit the petitioner stated that it “reserved its right to file rectification petitions” against all PhonePe registered marks, including, that which have been dishonestly and fraudulently registered by the respondent no. 1 herein.

"Similarly, in para No.60, it was submitted that the registrations obtained by the respondent no.1 are illegal and are liable to be rectified for which the petitioner would take “adequate steps”. Thus, in the written statement, the present petitioner has clearly indicated that it intended to take steps for rectification of the Register and these petitions appear to be in that direction", noted the bench.

With this in mind, the High Court observed that:

"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 of the Trademark in (CS (COMM) 292/2019), as held by the Supreme Court in Patel Field Marshal Agencies (supra).”

Cause Title: Resilient Innovations Pvt. Ltd. V Phonepe Private Limited & Anr