The Delhi High Court today, ruled that Dish TV cannot claim exclusive right to use the word ‘Dish’, stating that its used in generic nature, referring to the dish antenna. The court said that it will not be entitled to be protected under Section 30(2) of the Trade Marks Act, 1999, on a standalone basis, as reported by Live Law.
Justice Vibhu Bakhru and Justice Amit Mahajan were part of a division bench who came to the conclusion that the word ‘Dish’ in Dish TV is a prominent and essential feature of its trademark. However, it is not subject to any protection.
The bench also stated that ‘Dish’ is a common English word, and cannot be singled out to allow monopoly for its use, reported Live Law.
The court came to its decision after it set aside the order by a single judge in July 2019, restraining Prasar Bharti from adopting the trademark ‘DD Free Dish’ or any other with the use of the word ‘Dish’, pending disposal of the infringement suit filed by Dish TV.
The single judge had given Prasar Bharati three months to inform its customers of its new name as it allowed the interim injunction plea filed by Dish TV.
The bench stated the the registered trademark for Dish TV consists of two words – Dish and TV. The trademark used by Prasar Bharati also consists of three words – 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, as reported by Live Law.
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 lead to consumers getting confused, the court said.
It added that prima facie, there was no possibility of anyone being confused because of the word ‘Dish’ by Prasar Bharti in ‘DD Free Dish’.
The court also stated that the words ‘Dish’ and ‘TV’ may have acquired distinctiveness due to it being used for a long time. It can also be said to have gained the secondary meaning when used together. However, the court said that this does not provide Dish TV with any right to any exclusivity for the word ‘Dish’.
The bench stated that the findings were prima facie for the issue of an interim injunction to restrain Prasar Bharati was necessary. It also mentioned that nothing in its order will preclude the parties from advancing their submissions, reported Live Law.