Dish TV Cannot Claim Exclusive Right On Use Of 'Dish' Word, Not Entitled For Protection Under Trade Marks Act: Delhi High Court

The Delhi High Court has ruled 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.A division bench comprising Justice Vibhu Bakhru and Justice Amit Mahajan observed that the word 'Dish' appearing in Dish TV's trademark is a prominent or essential feature of its trademark, but it is not entitled to any protection. Observing that the mark “Dish TV” has to be looked at as a whole, the bench said that the word “Dish” is a common English word which cannot be described as a prominent or essential feature of such nature that monopoly is permitted over its use.The court made the observations while setting aside a single judge's order passed in July 2019 restraining Prasar Bharti from adopting the trademark “DD Free Dish” or any other mark incorporating the mark “Dish” , pending disposal of the trademark infringement suit filed by Dish TV.The single judge had granted three months to Prasar Bharti to inform its customers of the new name as it allowed the interim injunction plea filed by Dish TV.Setting aside the single judge's order, the bench said that the trademark registered in favour of Dish TV consists of not one but two words i.e. Dish and TV and the mark used by Prasar Bharti also consists of three words i.e. DD, Free and Dish.“A comparison of the two marks shows that other than the word 'Dish' occurring in both the marks, there is no other similarity. The mark being used by the appellant includes its well-known trade name, that is, DD,” the court said.It added: “It is not in dispute that the word 'Dish' being used in both the marks relates to the 'Dish Antenna'. The word 'TV' denotes the device which is used for viewing the signals, that is a television. The words are common and on standalone basis may not be eligible for registration. The same are, to some extent, suggestive of the services being offered by the parties. The same denotes the Dish Antenna which is an essential component of the services provided by both the parties.”The court said that Dish TV was not able to point out any material, which would prima facie show that the use of the word 'Dish' by Prasar Bharti, had led to any confusion in the mind of the consumers.It added that prima facie, there was no likelihood of any one being deceived or confused from the use of word “Dish” by Prasar Bharti in it composite mark “DD Free 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 (Dish TV) 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,” the court said.However, the bench clarified that its observations were only prima facie for deciding whether an interim injunction to restrain Prasar Bharti ought to have been issued and that nothing in the order shall preclude the parties from advancing their submissions.Counsel for Appellant: Mr Rajeev Sharma, Senior Advocate with Mr Uddyam Mukherjee, Mr Saket Chandra Roy, Mr Pranav Giri and Mr Swapnil Pattanayak, AdvocatesCounsel for Respondent: Mr Sandeep Sethi, Senior Advocate with Mr Rohan Swarup and Ms Anjalika Arora, AdvocatesTitle: PRASAR BHARTI v. DISH TV INDIA LTD.Citation: 2024 LiveLaw (Del) 291Click Here To Read Order

Dish TV Cannot Claim Exclusive Right On Use Of 'Dish' Word, Not Entitled For Protection Under Trade Marks Act: Delhi High Court

Nupur Thapliyal

Tags