Delhi High Court rejects Dish TV’s claim of exclusive right over term ‘Dish’

In a significant ruling, the Delhi High Court has declared that Dish TV cannot assert exclusive rights over the term ‘Dish’, emphasizing its generic nature in reference to the dish antenna. The court has rejected Dish TV’s claim for protection 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 said that while the word ‘Dish’ is indeed a prominent aspect of Dish TV’s trademark, it does not warrant individual protection. The bench underscored the common usage of ‘Dish’ as a basic English term, dismissing any monopoly claims over its utilization.

The court’s verdict overturned a previous order issued by a single judge bench in July 2019, which had restrained Prasar Bharati from adopting the trademark ‘DD Free Dish’ or any other incorporating the term ‘Dish’, pending the resolution of an infringement suit initiated by Dish TV.

The earlier injunction had mandated Prasar Bharati to inform its customers of a potential new name within three months, following Dish TV’s interim plea. Examining the trademark compositions, the double bench observed that while Dish TV’s registration comprises the two words ‘Dish’ and ‘TV’, Prasar Bharati’s trademark includes three distinct elements – ‘DD’, ‘Free’, and ‘Dish’.

The court said, “A comparison of the two marks reveals that apart from the common occurrence of the word ‘Dish’, there exists no other similarity. The appellant’s mark incorporates its widely recognized trade name, namely, DD.”

Additionally, Dish TV was not able to point out any material indicating that the use of the word ‘Dish’ by Prasar Bharti has led to consumers getting confused. Court said that prima facie, there was no possibility of anyone being confused because of the word ‘Dish’ by Prasar Bharti in ‘DD Free Dish’.

The ruling signifies a broader interpretation of trademark law, affirming the principle of preserving generic terms for common usage rather than granting exclusive rights to particular entities. It also underscores the importance of contextual analysis in trademark disputes, considering the overall composition and distinctiveness of each mark. DreamDth