Delhi High Court Rejects Order Restraining Prasar Bharti from Using Trademark ‘DD Free Dish’
States that the principles of natural justice were disregarded and the complainant was not given the opportunity of rebuttal
Delhi High Court Rejects Order Restraining Prasar Bharti from Using Trademark ‘DD Free Dish’
States that the principles of natural justice were disregarded and the complainant was not given the opportunity of rebuttal
A Division Bench of the Delhi High Court has set aside an interim order passed by a single-judge bench restraining public broadcaster Prasar Bharti from using the trademark ‘DD Free Dish’ or any mark incorporating the word ‘Dish’ for its Direct-To-Home (DTH) service.
In the Prasar Bharti v. Dish TV India Ltd case, the bench comprising Justice Vibhu Bakhru and Justice Amit Mahajan observed that the single-judge bench was wrong in holding that the trademarks Dish TV’ and ‘DD Free Dish’ were similar, and the judgment disregarded the anti-dissection rule.
The court stated, “The words ‘Dish TV’ form a part of the registered mark and are used in conjunction. Their appearance on the label is to be considered together. The services provided by the respondent are associated with the label ‘Dish TV; and not with the word ‘Dish’. The words ‘Dish TV’ may have acquired distinctiveness because of long-term use and can be said to have acquired a secondary meaning when used together. However, this does not entitle the respondent to any exclusive right to the word ‘Dish’. The word is suggestive of the DTH services as it requires a dish antenna to receive the signals.”
The bench added that the single judge also disregarded the principles of natural justice, and his findings were based on material and Prasar Bharti was not given the opportunity of rebuttal.
In the 16 July 2019 order, the single judge had restrained Prasar Bharti from using the trademark ‘DD Free Dish’. He had expressed disappointment at finding a public sector undertaking for using the trademark of another entity and contesting the litigation at the cost of the exchequer.
Aggrieved by the order, Prasar Bharti filed an appeal.
Justice Bakhru and Justice Mahajan held that even though the word ‘Dish’ appearing in Dish TV’s trademark was a prominent feature, it was not entitled to any protection.
The court further held that if the argument by Dish TV was accepted, it would also be entitled to an injunction when any party used the word ‘TV’ in its trademark because the word ‘TV’ in the respondent’s mark was also a prominent and essential feature.
The judges remarked, “It is not the respondent’s case that the word ‘Dish’ is 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, as also noted by the judge. It cannot be described as a prominent or an essential feature of such nature to allow the plaintiff a monopoly over its use.”
The bench stated that Dish TV did not submit any material that would prima facie show that the use of the word ‘Dish’ by Prasar Bharti led to any confusion in the consumers’ minds.
It added, “The existence of the word ‘DD’ as part of the appellant’s mark, which has been associated with the appellant for the last many decades, is, prima facie, sufficient to put the consumers to notice of the distinctive origin of the appellant’s services. We are unable to accept that there is any likelihood of anyone being deceived or confused from the use of the word ‘Dish’ by the appellant in its composite mark ‘DD Free Dish.’”
Senior advocate Rajeev Sharma, with advocates Uddyam Mukherjee, Saket Chandra Roy, Pranav Giri and Swapnil Pattanayak appeared for Prasar Bharti.
Dish TV was represented by senior advocate Sandeep Sethi and advocates Rohan Swarup and Anjalika Arora.