NO exclusive rights over the generic term ‘Dish’ – HC

Dish TV cannot claim exclusive rights over the generic term ‘Dish’, Prasar Bharti wins the suit.

Case Background

Prasar Bharti, operating as Doordarshan, launched its DTH service under the name ‘DD Direct Plus’ in 2004, later rebranded as ‘DD Free Dish’ in 2014

Dish TV, a separate entity, has been providing DTH services under the trademark ‘Dish TV’ since 2003, claiming exclusive rights to the term ‘Dish’. Dish TV initiated legal action, alleging trademark infringement due to Prasar Bharti’s use of ‘DD Free Dish’.

The Delhi High Court initially granted an interim injunction, restraining Prasar Bharti from using ‘DD Free Dish’ during the suit’s pendency.

Prasar Bharti appealed this decision under the Commercial Courts Act, contesting Dish TV’s claim of exclusive rights over the term ‘Dish’.

Legal Arguments

Prasar Bharti argued that ‘Dish’ is a generic term, referring to a dish antenna necessary for DTH services, and thus cannot be exclusively claimed as a trademark.

They contended that Dish TV’s registered trademark is a composite mark and cannot assert exclusivity over a common term. Conversely, Dish TV argued that Prasar Bharti’s use of ‘DD Free Dish’ infringes its trademark rights and creates confusion among consumers.

They claimed Prasar Bharti’s renaming strategy was an attempt to exploit Dish TV’s reputation and goodwill.

The Court analyzed previous judgments and emphasized considering trademarks as whole entities, not dissecting them into individual components. It concluded that while ‘Dish’ may be part of Dish TV’s mark, it cannot claim exclusive rights to the generic term.

The Court dismissed Dish TV’s claim, highlighting the lack of evidence showing consumer confusion and the generic nature of the term ‘Dish’.

Court’s Decision:

The Delhi High Court ruled in favor of Prasar Bharti, setting aside the lower court’s injunction. It held that Dish TV cannot claim exclusive rights over the generic term ‘Dish’, which refers to a dish antenna essential for DTH services.

The Court emphasized that trademark comparison should consider marks as a whole and not isolate common terms

Since the only similarity between the marks was the term ‘Dish’, the Court found no justification for restraining Prasar Bharti’s use of ‘DD Free Dish’.

This decision underscores the principle that generic terms cannot be monopolized as trademarks, especially when they are essential to the relevant industry. The ruling provides clarity on trademark protection and promotes fair competition within the DTH services sector.

For More information get in touch with us at [email protected]

Visit us http://www.consumerseva.com