Dish TV Not Entitled To Exclusively Use The Word ‘Dish’:Delhi HC Sets Aside Interim Order Restraining Prasar Bharti From Adopting "DD Free Dish"
The Delhi High Court set aside an interim order passed by a Single Judge restraining Prasar Bharti from adopting the trademark “DD Free Dish” or any other mark incorporating the mark ‘Dish’.
The court held that Dish TV is not entitled to any exclusive right in respect of the word ‘Dish’.
The Court addressed the principal question, that is, whether the two competing marks ‘Dish TV’ and ‘DD Free Dish’ are similar or identical. The Court said the word ‘Dish’ is not a fanciful or a coined word, which evokes an impression that the services covered under the mark are associated with the Respondent. It is a common English word which denotes Dish Antenna
The Division Bench of Justice Vibhu Bakhru and Justice Amit Mahajan held, “First of all, the decision 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.”, the Court observed.
Senior Advocate Rajeev Sharma appeared on behalf of the Appellant and Senior Advocate Sandeep Sethi appeared on behalf of the Respondent.
The Appeal was filed by Prasar Bharti, also known as Doordarshan, challenging the order passed by the Single Judge granting the injunction. The Appellant was engaged in providing DTH Services under the trade name ‘DD Direct Plus’. However, in the year 2014, it was renamed as ‘DD Free Dish’.
The Court did not agree with the submission advanced by the Respondent that since the Appellant had applied for the trademark registration for the mark ‘DD Free Dish’, it cannot be heard to say that the said mark is generic/publici juris.
The Court held, “Even though the word ‘Dish’ appearing in the respondent’s trademark is a prominent/essential feature of its trademark, but for the reasons mentioned above, the same is not entitled to any protection. The mark has to be looked at as a whole. If the argument advanced by the respondent is accepted, then it would also be entitled to an injunction when any party uses the word ‘TV’ in its trademark for the reason that the word ‘TV’ in the respondent’s mark is also a prominent and essential feature of the mark. Obviously, this contention cannot be accepted.”
The Court lastly clarified that the observations made in the order are only prima facie, only to decide whether an interim injunction restraining the Appellant ought to have been issued. The order shall preclude the parties from advancing their respective contentions and the Trial Court shall adjudicate the suit uninfluenced by any observations made by the Court.
Accordingly, the Court set aside the impugned order.
Cause Title: Prasar Bharti v. Dish TV India Ltd. (Neutral Citation: 2024: DHC:1855-DB)
Appearances:
Appellant: Senior Advocate Rajeev Sharma, Advocates Uddyam Mukherjee, Saket Chandra Roy, Pranav Giri and Swapnil Pattanayak.
Respondent: Senior Advocate Sandeep Sethi, Advocates Rohan Swarup and Anjalika Arora.