Bombay High Court clears way for PhonePe to file fresh trademark suit against Postpe

A Division Bench of the Bombay High Court on Friday paved way for PhonePe to file a fresh suit claiming trademark infringement against Resilient Innovations, the owners of Postpe. .A Division Bench of Justices SJ Kathawalla and Milind Jadhav refused to interfere with the single-judge‘s order granting leave to PhonePe to withdraw its earlier suit and file a fresh one.The order was passed dismissing the appeal filed by Resilient Innovations (which owns Postpe) against the single-judge‘s order as not maintainable. The Bench held that the appeal is not maintainable under Section 13 of Commercial Courts Act as order under challenge is not a decree under the Code of Civil Procedure (CPC)..“We make it clear that we have expressed no opinion on the merits of the appeal and all rights and contentions in this regard are expressly kept open. For a period of three weeks from the date of uploading of this order PhonePe will not move any application for ad-interim in the second suit so as to enable PostPe to assail the impugned order,“ the order stated. .The dispute between the parties arose when PhonePe alleged that Resilient is engaged in the identical field of digital payment services to customers through its mobile application 'Postpe'. It was claimed that Postpe was in blatant infringement of PhonePe's trademark and was passing off as PhonePe.In the infringement suit which was heard by a single-judge of the High Court, interim relief was refused after the Bench noted that PhonePe has no registration of the word mark 'PE' per se. It has a label or device mark with the word 'PE' in Devanagari script..While the order was being dictated, PhonePe had through its counsel sought leave to withdraw the suit with liberty to file a fresh suit restricting the claim to mark PhonePe as a whole.This was granted by the single-judge, who also permitted Resilient to rely on the observations made the judge while making submissions in the new suit.This portion of the order was challenged by Resilient in the present appeal..The appeal stated that liberty could not have been granted to allow PhonePe to cure a defect of substance, improve the frame of the suit or to overcome the possibility of failure to prove the case pleaded in the original plaint..Senior Advocate Janak Dwarkadas, appearing for PhonePe, opposed the appeal on the grounds that it was not maintainable. He stated that the order in question was not a judgment or a decree which was appealable.He stated that the appeal did not take away any alleged vested right of Resilient, and that PhonePe being the registered proprietor of the trademark, is entitled to statutory protection.Dwarkadas contended that the appeal merely challenged the liberty granted to file fresh suit, but it was impermissible to split prayers seeking withdrawal versus filing fresh suit..Senior Advocate Darius Khambata for Resilient contended that the order in question was a decree, as it finally and conclusively put to rest the controversy between the parties, and the same need not have been on the merits of the case.Khambata's contention was that it was essential for Resilient to get a chance to respond to the prayer of PhonePe seeking liberty liberty to file a fresh suit, and since they did not get the same, the same was challenged in the present appeal..After hearing the parties at length, the Division Bench reserved the verdict on December 3, 2021, and pronounced the verdict today. .Senior Advocates DJ Khambatta and Sharan Jagtiani appeared along with Advocates Nishad Nadkarni, Mohit Goel, Siddhant Goel, Asif Navodia, Khushboo Jhunjhunwala, Deepankar Mishra, Aditya Goel and Abhishek Kotnawal briefed by Sim and San, Attorneys at Law and Khaitan & Co. appeared for PostPe (Resilient).Senior Advocates Janak Dwarkadas and Venkatesh Dhond appeared with Advocates Hiren Kamod, Manish Jha, Hormuz Mehta, Anjali Anchayil, Yohaann Limathwala, Ahsan Allana briefed by J Sagar Associates appeared for PhonePe. [Read order]