Use of “Dish” deemed non-infringing trademark; Delhi High Court rejects interim injunction against Prasar Bharti’s DD Free Dish

Delhi High Court

Delhi High Court: An intra court appeal was filed by Prasar Bharti (Broadcasting Corporation of India)) (appellants) also known as Doordarshan, the public broadcaster of the country, providing free Radio and Television services to all subscribers including Direct to Home (hereafter ‘DTH’) services since the year 2004 impugning an order dated 16-07-2019 passed by the Single Judge whereby the respondent’s application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 was allowed and the appellant was restrained from adopting the trademark ‘DD Free Dish’ or any other mark incorporating the mark ‘Dish’, pending disposal of the suit. A division bench of Vibhu Bakhru and Amit Mahajan, J., held that in the present case, the Single Judge has erred in holding that the competing marks are similar and respondent does not hold any exclusive right in respect of the word ‘DISH’.

The Court noted “A bare visual comparison of the two marks shows that apart from the word ‘Dish’, there is no other similarity. The word DD has been associated with the appellant’s trade name and reputation over the decades. The existence of the word ‘DD’ as part of the appellant’s mark, in our opinion, is prima facie, sufficient to indicate to the general public, the distinctive origin of the appellant’s service. There is no likelihood of confusion in the minds of the purchasing public as to the origin of the services.

The case at hand involved the use of the term “Dish” in relation to Direct-to-Home (DTH) television services. The respondent holds a registration for the trademark “Dish TV” and claims that the term “Dish” is an essential and dominant part of its mark. The appellant, on the other hand, had applied for registration of the mark “DD Free Dish” but had not sought registration for the standalone term “Dish”. The respondent alleged that the appellant’s use of the term “Dish” infringes upon its trademark rights. The respondent initiated legal action seeking an injunction to restrain the appellant from using the term “Dish” in its mark “DD Free Dish”. The respondent argued that the term “Dish” is associated with DTH services and is a crucial component of its trademark “Dish TV”. The appellant contested this, claiming that “Dish” is a generic term and that its use of the term “DD Free Dish” does not infringe on the respondent’s trademark rights.

Counsel for the respondent argued that the term “Dish” is not generic but forms an essential part of its trademark, “Dish TV”, which has acquired distinctiveness through long-term use. It contended that the appellant’s use of the term “Dish” in its mark creates confusion among consumers and dilutes the distinctiveness of the respondent’s mark. In response, counsel for the appellant asserted that it had not applied for registration of the standalone term “Dish” and that common and generic words can be combined for trademark registration. It further argued that the respondent is entitled to protection for its mark, not for the individual words comprising it.

The Court noted that while the term “Dish” may be an essential part of the respondent’s mark, it is also a commonly used term in the context of DTH services. The Court observed that the appellant’s use of the term “Dish” in conjunction with “DD Free Dish” may not necessarily lead to confusion among consumers, especially considering the distinctiveness associated with the appellant’s mark. Furthermore, the Court scrutinized previous judgments and legal principles related to trademark protection and held that the mere presence of the term “Dish” does not automatically confer exclusive rights to the respondent. It emphasized the importance of considering the mark as a whole and not dissecting it into individual components.

The Court remarked that “the respondent has also not been able to point out any material, which would prima facie show that the use of the word ‘Dish’ by the appellant has led to any confusion in the mind of the consumers. As noted above, the existence of the word DD as part of the appellant’s mark, which has been associated with the appellant for last many decades, is, prima facie, sufficient to put the consumers to notice of the distinctive origin of the appellant’s services. Prima facie, we are unable to accept that there is any likelihood of any one being deceived or confused from the use of word ‘Dish’ by the appellant in its composite mark ‘DD Free Dish’.”

The Court remarked that “First of all, the decision (impugned) disregards the anti-dissection rule. The words ‘DISH TV’ form part of the registered mark and are used in conjunction. Their appearance in the label is to be considered together. The services provided by the respondent are associated with the label ‘DISH TV’; not with the word DISH. The words ‘DISH TV’ may have acquired distinctiveness because of long use and can be said to have acquired the secondary meaning when used together. However, this does not entitle the respondent to any exclusive right in respect of the word ‘DISH’. The said word is suggestive of the DTH services as it requires a Dish Antenna to receive the signals. Secondly, the learned Single Judge also disregards the principles of natural justice. The findings were based on the material in respect of which no opportunity of rebuttal was afforded to the appellant. The said findings are not based on the pleaded case of the parties.”

Thus, the Court held that the respondent’s claim for an injunction restraining the appellant from using the term “Dish” in its mark was not justified. It set aside the lower court’s judgment and emphasized that the observations made in its order were prima facie to decide on interim relief. The Court clarified that the Trial Court should adjudicate the suit without being influenced by its observations. In conclusion, the Court ruled in favor of the appellant, highlighting the generic nature of the term “Dish” and the lack of evidence indicating confusion among consumers.

[Prasar Bharti v. Dish TV India Limited, 2024 SCC OnLine Del 1694, decided on 06-03-2024]

Advocates who appeared in this case:

Mr Rajeev Sharma, Senior Advocate with Mr Uddyam Mukherjee, Mr Saket Chandra Roy, Mr Pranav Giri and Mr Swapnil Pattanayak, Advocates for appellants

Mr Sandeep Sethi, Senior Advocate with Mr Rohan Swarup and Ms Anjalika Arora, Advocates for respondents

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