Delhi High Court Division Bench overturns Prasar Bharti trademark interim order

A Division Bench of the Delhi High Court recently set aside an interim order passed by a single-judge restraining public broadcaster Prasar Bharti from using the trademark “DD FREE DISH” or any other mark incorporating the word “DISH” for its Direct-To-Home (DTH) service [Prasar Bharti v. Dish TV India Ltd].

Justices Vibhu Bakhru and Amit Mahajan observed that the single-judge was wrong in holding that the trademarks “DISH TV” and “DD FREE DISH” are similar and said that the judgment 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,” the Court said.

It added that the single-judge had also disregarded the principles of natural justice and that his findings were based on material in respect of which no opportunity of rebuttal was afforded to Prasar Bharti.

In an order passed on July 16, 2019, the single-judge had restrained Prasar Bharti from using the trademark DD FREE Dish.

The single-judge had also expressed its disappointment at finding a public sector undertaking using another’s trademark and contesting the litigation at the cost of the exchequer.

Prasar Bharti filed an appeal against the order.

The Division Bench has now held that even though the word ‘Dish’ appearing in Dish TV’s trademark is a prominent/essential feature of its trademark, the same is not entitled to any protection.

The mark has to be looked at as a whole. If the argument advanced by Dish TV 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 observed.

“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 learned Judge. The same in our opinion cannot be described as a prominent or an essential feature of such nature so as to allow the plaintiff a monopoly over its use,” it added.

The Bench was also of the view that Dish TV was not able to point out any material that would prima facie show that the use of the word ‘Dish’ by Prasar Bharti has led to any confusion in the mind of the consumers.

“As noted above, the existence of the word DD as part of the appellant’s mark, which has been associated with the appellant for last many decades, is, prima facie, sufficient to put the consumers to notice of the distinctive origin of the appellant’s services. Prima facie, we are unable to accept that there is any likelihood of any one being deceived or confused from the use of word ‘Dish’ by the appellant in its composite mark ‘DD Free Dish’.”

Senior Advocate Rajeev Sharma along with Advocates Uddyam Mukherjee, Saket Chandra Roy, Pranav Giri and Swapnil Pattanayak appeared for Prasar Bharti.

Senior Advocate Sandeep Sethi along with Advocates Rohan Swarup and Anjalika Arora represented Dish TV. Bar & Bench