Bombay High Court reserves order on plea challenging permission to PhonePe to file fresh trademark suit against Post Pe

A Division Bench of the Bombay High Court on Thursday reserved its verdict in the appeal filed by Resilient Innovations against the single-judge order granting liberty to PhonePe to file a fresh suit claiming trademark infringement..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 and was passing off as PhonePe's trademark.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 appeal did not state whether it was filed under Section 13 of the Commercial Courts Act. Assuming that it was filed under Section 13, it was still not maintainable as the order in question was not a judgment or a decree which was appealable..He further 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..Countering these submissions, 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.He further relied upon a judgment of the Supreme Court which held that withdrawal of suit without permission decided nothing and could not be considered a decree. In view of this, the natural sequitur that follows is that withdrawal with permission to file a fresh suit would be a decree resulting in disposal of suit, Khambata stated.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 submissions of both counsel at length on Wednesday, the Division Bench enquired if PhonePe was willing to put a formal withdrawal application to which Resilient may respond, after which the portion of the order under challenge could be set aside. Dwarkadas sought time to take instructions. .On Thursday, based on those instructions, Dwarkadas requested the Division Bench of Justices SJ Kathawalla and Milind Jadhav to decide whether the leave granted by the single judge bench to PhonePe to file a fresh suit was proper or not.“If your lordships come to the conclusion on whether the appeal is maintainable or not, then also decide whether or not leave ought to have been given. This is my submission and request,” Dwarkadas submitted.The other side raised an objection to the submission which the Bench took note of and reserved the appeal for orders..Dwarkadas was briefed by J Sagar Associates. Khambata was briefed by Sim and San, Attorneys at Law and Khaitan & Co.