In the matter of Dish TV India Ltd. v. Prasar Bharti [CS (COMM) 347/2016], the Delhi High Court, vide its order dated July 16, 2019, granted an interim injunction restraining Prasar Bharti from using the mark ‘DD Free Dish’ or any other mark incorporating the Plaintiff’s mark DISH. The Court, on a prima facie view, held that the Defendant’s use of the prominent and essential part of the Plaintiff’s mark amounts to infringement.
The Plaintiff, Dish TV India Ltd., claimed that it has been providing ‘Direct to Home (DTH)’ broadcasting services under the mark DISHTV since 2003. The Plaintiff further claimed that DISHTV is registered since 2003 and is also protected under Copyright law. The Plaintiff alleged that the Defendant had deliberately renamed its ‘Free to Air DTH service’ from ‘DD Direct+’ to ‘FREE DISH’ and also adopted a device of a Dish which is an “integral and distinctive element” of the Plaintiff’s trademark. The Plaintiff further contended that by incorporating ‘DISH’, which is the prominent and essential part of the Plaintiff’s mark DISHTV, the Defendant was not only infringing the Plaintiff’s mark as well as the copyright therein, but also passing off its services as that of the Plaintiff.
The Defendant contended that – (i) there is no similarity between the marks DD Free Dish and DISHTV; and (ii) ‘DISH’ is a generic term used to describe equipment which receives the satellite signals and is common to the trade of DTH broadcasting services, owing to which no exclusive rights can be claimed therein.
On the issue of genericity, the Court opined that “…(a) it is not as if “Dish” or “Dish Antenna‟ is confined to DTH service ….and, (b) “Dish” or “Dish Antenna” is not essential to DTH service”, and accordingly held that “… “Dish” is not generic to DTH service or publici juris and/or common to the trade of DTH service”. Applying the test of use by the Defendant of the prominent part of the Plaintiff’s registered mark, the Court, on a prima facie basis, held that “a clear case of infringement is made out”.
The Court also observed that owing to the prevalence of public-private partnerships and ventures, consumers or the public at large might form an opinion that the Defendant’s services under the DD Free Dish mark are being provided in association with the Plaintiff. The presence of ‘DD’ in the Defendant’s mark was held to be insufficient to prevent such confusion.