Conflicting marks must be read in its entirety; No Exclusive Rights on the use of generic term like ‘Dish’: Delhi High Court
Case title – Prasar Bharti VS Dish TV India Ltd.
Case no. – FAO (OS) (COMM) 267/2019 before the High Court of New Delhi
Decision on – March 06, 2024
Quoram – Justice Vibhu Bakhru and Justice Amit Mahajan
Facts of the case
The Appellant, Prasar Bharti also known as Doordarshan, is the public broadcaster of the country, providing free Radio and Television services to all subscribers and DTH services under the trademark and trade name ‘DD Direct Plus’ since the year 2004. However, in the year 2014, the appellant renamed it as ‘DD Free Dish’.
The respondent is a company also engaged in providing DTH services under the name ‘Dish TV’ since the year 2003. The respondent is a registered proprietor of the word mark ‘Dish TV’ and claims that there trademark ‘Dish TV’ has acquired distinctive character by virtue of its extensive and exclusive use. 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 “Free Dish” infringes upon its trademark rights. The respondent initiated legal action seeking a permanent injunction to restrain the appellant from using the term “Free Dish” in its mark “DD Free Dish”.
The learned Single Judge of Delhi HC, allowed the application for interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 and directed the appellant to refrain from using the mark ‘DD Free Dish’ or any other mark incorporating the word ‘Dish’ during the pendency of the suit.
The Prasar Bharti, appellant in the present case, aggrieved by this order, has filed an Intra- Court appeal under Section 13 of the Commercial Courts Act, 2015.
Submission of the Parties
Mr. Rajeev Sharma learned Senior Counsel for the appellant submitted that the word ‘Dish’ being a generic word refers to a Dish Antenna without which DTH services cannot be availed. The respondent is not entitled to claim an exclusive right over such marks under Section 30(2) of the TM Act. The Counsel submitted that the respondent’s registered trademark ‘Dish TV’ is a composite mark, which must be looked at as a whole and thus cannot claim exclusivity over a part of the registered trademark.
On the Contrary, Mr. Sandeep Sethi, learned senior counsel for the respondent contended that the appellant, by using the impugned mark ‘DD Free Dish’ is infringing its registered trademark ‘Dish TV’. Further, the trade name and the impugned mark used by the appellant are deceptively similar to its registered trademark.
The Counsel further submitted that the appellant’s sudden and unexplained change of the name from ‘DD Direct+’ to ‘DD Free Dish’ is clearly an attempt to illegally encash upon the reputation and goodwill of the respondent. The argument that the term ‘Dish’ is common to the trade is incorrect as none of the other DTH players have used the respondent’s mark.
Court’s Observation and Analysis
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. The Court delving into Section 17 of Trademarks Act, emphasized the importance of considering the mark as a whole and not dissecting it into individual components. The Court thus held that the conflicting marks are to be compared by looking at them in its entirety rather than breaking the marks into parts for comparison.
The Court noted that a bare visual comparison of the two marks shows that apart from the word ‘Dish’, there is no other similarity. 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. Thereby, it set aside the lower court’s judgment.
The Court ruled in favour of the appellant, highlighting the generic nature of the term “Dish” and the lack of evidence indicating confusion among consumers.
The Delhi High Court therefore held that Dish TV India Limited cannot claim exclusive right to use the word “Dish” as it is generic in nature which refers to dish antenna and it will not be entitled to be protected under Section 30(2) of the Trade Marks Act, 1999, on a standalone basis.
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Judgement Reviewed by – Keerthi K