Doordarshan Cannot Use The Word 'DISH' For Its DTH Services: Delhi HC While Granting Injunction To Dish TV [Read Order]

Delhi High Court grants injunction to Dish TV against Doordarshan in order to prevent the latter from using the word 'DISH' for its services. The Single Bench of Justice Sahay Endlaw refused to accept the defendant's claim of publici juris and termed the usage a prima facie case of infringement.

In the present case, The plaintiff had instituted a suit for permanent injunction restraining the defendant from infringing the trade mark 'DISHTV' of the plaintiff and from passing off the defendant‟s services as that of the plaintiff by adoption of the name / mark 'FREE DISH' and for ancillary reliefs.

The plaintiff contended that the word 'DISH' was first coined by them and is a very integral and distinctive element of its trademark. Further, the defendant has also adopted a logo which is deceptively similar to that of the plaintiff‟s inasmuch as the defendant‟s stylized logo contains the device of a dish which is also an integral and prominent part of the plaintiff‟s 'DISHTV' logo.

The defendants, on the other hand, denied any possibility of deception and also argued that 'DISH' is publici juris and no one can claim exclusive right thereto. Moreover, under Section 17 of the Trade Marks Act, 1999, registration of a trade mark confers rights in the mark as a whole and not in part or fragments of the mark; the plaintiff having chosen to brand its product with a generic word, 'DISH', any other person entering the market would have the right to use the said term to identify the product in question and the plaintiff if had not desired so, ought to have branded its product with a unique name.

The court opined that when the defendant itself was able to provide the said service without using the word 'DISH' from 2004 to 2014 and when others also are providing the same services as the plaintiff and the defendant, without using the word 'DISH', it is not open to the defendant to say that the use of the word 'DISH' by the defendant is indicative of the kind or characteristic of services being rendered by the defendant. Thus, none of the defences under Section 30 of the Trade Marks Act are available to the defendant.

The court also rejected defendant's claim of publici juris by noting that 'Dish' is not generic to DTH service or publici juris and/or common to the trade of DTH service for it to be said that adoption thereof by plaintiff for its DTH services cannot prevent the others providing same service from using the same for the reason of its being essential for them for describing their service.

Finally, the court relied upon the ratio laid down in United Biotech Pvt. Ltd., and Laxmikant V. Patel , where the test applied was of use by the defendant of a prominent part of the plaintiff's registered trademark, to hold that the mark used by the respondent does make a prima facie case of infringement. It opined that for the consumers/subscribers to form an opinion that the plaintiff, in association with Doordarshan, is providing certain free channels also and may result in the consumers/subscribers wanting the paid channels of the plaintiff also to be telecast free.

While granting the injunction to the plaintiff, the court also criticised the defendant for making inordinate delays in taking any action despite repeated complaints made by the plaintiff. It was dismayed that the defendant, a public sector enterprise, indulged in using another's trademark and in spite of the plaintiff objecting thereto, refused to act reasonably. The same is not expected of a public sector enterprise which according to the proclaimed litigation policy of the Government is not to be indulged in. 

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