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Court Case Bulletin (CCB): Common Suffix Does Not Amount To Deceptive Similarity In Absence Of Substantial Evidence Of Actual Confusion
Author: Former Intern - Sneha Sharma
In the matter of PhonePe Private Limited v BundlePe Innovations Pvt. Ltd.[Civil Suit (COMM DIV) No.119 of 2023], a Single Judge [P. Velmurugan, J.] of the High Court of Madras, vide judgment dated January 21, 2025, rejected the Plaintiff’s claim of permanent injunction and held that mere use of common suffix “Pe” in Defendant’s domain names viz. “https://bundlepe.com/” & “https://latepe.in/” and Plaintiff’s domain name “phonepe.in”, does not amount to deceptive similarity as there is lack of substantial evidence of actual confusion or any harm to Plaintiff’s brand.
Section 2(1)(h) of the Trademarks Act, 1999 (“the Act”) states that “A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.” The issue was whether the use of a common suffix in Defendant’s domain name could result in deceptive similarity.
The Plaintiff contended that its domain name “phonepe.in” and Defendant’s domain names “https://bundlepe.com/” & “https://latepe.in/” encapsulates a common suffix “Pe”, which increases the likelihood of confusion in the minds of consumers. The Plaintiff further argued that this would have a detrimental impact on their brand name and goodwill and sought an injunction to prevent the Defendant from using any deceptively similar domain name that would create an impression of association with Plaintiff.
The Defendant contended that their domain names “https://bundlepe.com/” & “https://latepe.in/” are entirely different from the Plaintiff’s domain name “phonepe.in”. The inclusion of the words “Bundle” and “Late” sufficiently differentiates the domain name of Defendant from that of the Plaintiff and prevents any likelihood of confusion among the consumers. Moreover, the Defendant contended that domain names are not deceptively similar and have been independently registered for their business activities.
The Court rejected Plaintiff’s contention and pointed out that “The word “Pe” denotes a common suffix in the digital payment industry and does not, on its own, create confusion. The Plaintiff must demonstrate that the defendants’ domain names have caused, or are likely to cause, confusion among consumers. However, the Plaintiff did not provide substantial evidence to show that consumers were actually confused or misled by the Defendants’ domain names. There were no consumer complaints or evidence of lost business due to the Defendants’ domain names. In the absence of such evidence, the Court found no justification for granting an injunction”.
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