PayPal instituted a Notice of Opposition in PayTM’s application under Class 36 to register its TM. PayPal is one of the world’s largest online payment services with presence in over 190 countries and the ability to transact in over 100 currencies. PayPal alleges in its notice that PayTM has misappropriated the latter’s bicolor scheme. We also have a feeling that this dispute will soon escalate into a passing off action too; wherefore we have dealt with issues beyond the scope of the opposition proceedings as well.
Analysis
Is PayPal’s opposition plagued with laches?
PayTM may argue that PayPal’s opposition should be rejected since it comes nearly 4 years after PayTM first started using the mark. No claims of passing off or infringement were made earlier. PayTM may also argue that PayPal has filed the opposition with a clear intention to damage the immense spurt in PayTM’s reputation after the recent demonetization in India. Having read the fine print, we believe that PayPal will take this round.
It is true that PayTM filed its application in 2012; however, it was advertised in the TM Journal (No. 1754) only on July 18, 2016. Section 21 of the TM Act enables any person to oppose a trademark by filing Form TM-5 within 3 months of the advertisement of such mark in the TM Journal; with a maximum extension of another month. PayPal seems to have filed its notice of opposition on the very last day of this time frame on November 18, 2016. Therefore PayTM must file reply to PayPal’s opposition notice within a maximum period of three months after PayTM is formally in receipt of the opposition notice; failing which the PayTM Device Mark may be deemed abandoned.
Can PayPal claim exclusivity over the word “Pay”?
According to us, PayPal cannot claim exclusivity over a generic word like “PAY”. PayPal will have to prove that “PAY” has acquired a secondary meaning exclusively in relation to PayPal’s use in India. Chances to prove this seem very bleak. We can compare this decisions analyzing whether “TODAY” can be monopolized by any one news group. The Delhi High Court answered in the negative because there was no evidence of them using the stand-alone term “Today” for any of their services. Therefore, we believe that PayTM will take this round since several other e-wallet companies use PAY in their trademarks or trade names. Similarly, the Bombay HC recently held that “SHAADI” cannot be monopolized since it’s a word of common parlance in India and would therefore be descriptive of online marriage portal services.
Can PayPal successfully claim exclusivity over its Bicolor Mark?
The color trademark is a non-conventional trademark which is still in its infancy in India. For instance, the Indian Trademark Registry rejected Cadbury’s attempt to monopolize its instantly recognizable purple packaging for lack of distinctiveness. The ‘Color Depletion Theory’ justifies the rejection of trademark protection for single color marks on grounds that protection will eventually lead to the depletion of all available colors. PayPal’s application for its particular bicolor device was filed in 2014 via an international registration.
