The Delhi High Court on 6th March 2024 pronounced a landmark decision pertaining to a trademark dispute between Prasar Bharti and Dish TV India Limited, shedding light on key aspects of trademark law in India.[1] The case involving Prasar Bharti's “DD Free Dish” and Dish TV India Limited’s “Dish TV”, and the Court has ruled in favour of Prasar Bharti concerning the use of the term “Dish” in relation to Direct-to-Home (DTH) television services.
The dispute dates back to an order dated July 16, 2019, passed by a Single Judge of the Delhi High Court. In this order, an interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, was granted against Prasar Bharti, restraining them from utilizing the trademark “DD Free Dish” or any similar mark containing the term “Dish” while the case was pending. Prasar Bharti appealed this order under Section 13 of the Commercial Courts Act, 2015, leading to a thorough examination of the legal issues involved.
Prasar Bharti, responsible for providing free radio and TV services in India, including Direct-to-Home (DTH) services under the name “DD Direct Plus”, renamed their DTH platform as “DD Free Dish” in 2014. On the other side, Dish TV India Limited, in the DTH business since 2003 under the brand name “Dish TV”, claimed to be the first to introduce DTH services in India. They hold trademarks for “Dish TV” and “Dish” and alleged infringement by Prasar Bharti’s use of the term “Dish” in their mark “DD Free Dish”.
The main issue was whether the use of the term “Dish” in their mark “DD Free Dish” by Prasar Bharti constituted trademark infringement.
Prasar Bharti contended by asserting that "Dish" was a generic term denoting a dish antenna, which is essential for DTH services. They argued that its incorporation in their mark was descriptive and did not encroach upon Dish TV India Limited's trademark rights. Furthermore, they argued that they had not applied for registration of the standalone term "Dish" and that common words can be combined for trademark registration.
Dish TV India Limited countered by stating that "Dish" was an integral element of their trademark, "Dish TV", and had acquired distinctiveness through long-term use. They contended that Prasar Bharti's use of "Dish" led to consumer confusion, thereby diluting the distinctiveness of their mark.
The Division Bench of the Delhi High Court, comprising Justices Vibhu Bakhru and Amit Mahajan, after carefully examining the arguments presented by both parties noted that while "Dish" may be an essential part of the respondent's mark, it is also a commonly used term in the context of DTH services. Moreover, the Court emphasized the importance of considering the mark as a whole and not dissecting it into individual components.
Crucially, the Court held that the mere presence of the term "Dish" does not automatically confer exclusive rights to the respondent. It observed that Prasar Bharti's use of the term "Dish" in conjunction with "DD Free Dish" did not necessarily lead to confusion among consumers, especially considering the distinctiveness associated with Prasar Bharti's mark.
Moreover, the Court while rejecting Dish TV India Limited's claim that Prasar Bharti's use of "Dish" constituted infringement, stating that "Dish" is a common English word for a dish antenna and does not constitute an integral element of their mark.
Accordingly, the Court emphasized that the principles of natural justice had been disregarded in the lower court's decision, as the findings were based on material for which no opportunity for rebuttal was afforded to Prasar Bharti.
In conclusion, the Delhi High Court's decision provides clarity on the use of common and generic terms in trademarks and reaffirms the principles of natural justice in legal proceedings This ruling sets an important precedent for future trademark disputes, highlighting the need to consider the overall context and distinctiveness of the marks involved. The Court set aside the lower court's judgment and emphasized that its observations were prima facie to decide on interim relief, urging the Trial Court to adjudicate the suit without being influenced by its observations.
[1] FAO(OS)(COMM) 267/2019
