Delhi HC Sets Aside Injunction Against Prasar Bharti 's 'DD Free Dish ' in Dish TV Trademark Dispute

New Delhi: In a significant ruling concerning trademark rights over generic terms within composite marks, the Delhi High Court on March 6, 2024, set aside an interim injunction that had restrained public broadcaster Prasar Bharti from using the mark 'DD Free Dish '. The division bench, comprising Justices Vibhu Bakhru and Amit Mahajan , held that prima facie, the marks ' Dish TV' and 'DD Free Dish ' are not similar when viewed as a whole, and that the respondent, Dish TV, could not claim exclusive rights over the generic word ' Dish ' which is descriptive of Direct-to-Home (DTH) services.

The judgment was delivered in an appeal (FAO(OS)(COMM) 267/2019) filed by Prasar Bharti challenging the Single Judge's order dated July 16, 2019. The Single Judge had allowed an interim application by Dish TV, directing Prasar Bharti to cease using 'DD Free Dish ' or any mark incorporating the word ' Dish ' pending the disposal of Dish TV's suit for trademark infringement and passing off.

Background of the Dispute

Dish TV India Ltd., a private DTH operator, claimed to be the prior user of the trademark ' Dish TV' since 2003 and held registrations for the word mark and label. They argued that ' Dish TV' had acquired distinctiveness through extensive use and had a large subscriber base.

Prasar Bharti , the public broadcaster, had been providing free DTH services under the name 'DD Direct Plus' since 2004. In 2014, they rebranded the service as 'DD Free Dish '. Dish TV objected to this change, alleging infringement due to the inclusion of the word ' Dish '.

Single Judge's Findings

The Single Judge had prima facie found in favour of Dish TV, concluding that the word ' Dish ' was not publici juris (common to the public) or common to the DTH trade. The court rejected Prasar Bharti 's defences under Section 30 of the Trade Marks Act, 1999 (TM Act) and interpreted Sections 31 and 47 regarding the validity of registered marks. Comparing the marks ' Dish TV' and 'DD Free Dish ', the Single Judge considered ' Dish ' a prominent part and found a likelihood of confusion, even suggesting consumers might believe Prasar Bharti 's free service was an offering in association with Dish TV.

Arguments on Appeal

Prasar Bharti , represented by Senior Advocate Mr. Rajeev Sharma, argued that ' Dish ' is a generic term referring to the ' Dish Antenna', an essential component of DTH services, and is therefore not entitled to exclusive protection under Section 30(2)(a) of the TM Act. They contended that ' Dish TV' is a composite mark, and under Section 17 of the TM Act, registration of a whole mark does not confer exclusive rights over a part, especially if that part is common to the trade or non-distinctive. They also highlighted the clear distinction provided by 'DD' in their mark, signifying Doordarshan , a well-known entity. Furthermore, they argued that the Single Judge's technical finding about the irrelevance of the ' Dish ' shape was based on personal reading outside the pleadings and violated principles of natural justice.

Dish TV, represented by Senior Advocate Mr. Sandeep Sethi, countered that 'DD Free Dish ' was deceptively similar to their registered mark ' Dish TV'. They claimed Prasar Bharti 's renaming was an attempt to encash on their goodwill and reputation. They asserted that ' Dish ' was not common to the trade, pointing out that other DTH operators do not use the word ' Dish ' in their names.

High Court's Analysis and Decision

The Appellate Bench framed the central question as whether the marks ' Dish TV' and 'DD Free Dish ' were, prima facie, similar or identical under Section 29(1) of the TM Act, given that the services provided were similar.

Analyzing the marks, the court noted that the only common element was the word ' Dish '. Applying the principles under Section 17 of the TM Act and the anti-dissection rule , the bench emphasized that a composite mark must be viewed as a whole. While a dominant feature can be considered, it is impermissible to find similarity by comparing portions if the marks, when viewed in their entirety, are not similar.

The court explicitly disagreed with the Single Judge's finding that ' Dish ' was not generic or descriptive of DTH services. They held that ' Dish ' is commonly used for ' Dish Antenna', an essential component, making it descriptive. The bench found the Single Judge's technical reasoning about the ' Dish ' shape to be based on personal reading, a violation of natural justice as parties had no opportunity to rebut it.

The judgment cited Section 30(2)(a) of the TM Act , which states that a registered trademark is not infringed if the use indicates the kind, quality, intended purpose, or other characteristics of the services. The court found that the use of ' Dish ' by Prasar Bharti fell within this exemption, as it indicated the nature of the service requiring a dish antenna.

The bench observed that while ' Dish TV' might have acquired distinctiveness as a whole, this did not grant exclusivity over the generic word ' Dish '. They noted that the word ' Dish ' is not fanciful or coined but a common English word directly related to the service.

Crucially, the court found that the presence of 'DD', a well-known identifier for Doordarshan , in Prasar Bharti 's mark 'DD Free Dish ' was prima facie sufficient to indicate a distinctive origin to the consumers, negating the likelihood of confusion.

Referring to the principle from Wander Ltd. And Anr. v Antox India P. Ltd. (1990 Supp. SCC 727) that an appellate court interferes with an interim order only if the trial court's jurisdiction was exercised arbitrarily, capriciously, or in ignorance of settled principles, the bench concluded that the Single Judge had indeed erred. The errors identified included disregarding the anti-dissection rule, basing findings on material not put to parties (violating natural justice), and findings not aligned with pleaded cases.

Consequently, the High Court set aside the impugned order dated July 16, 2019. The bench clarified that these observations are only prima facie for the purpose of the interim injunction and the trial court shall adjudicate the suit on its merits uninfluenced by these findings.

The judgment underscores the principle that registration of a composite trademark does not automatically grant exclusive rights over individual components, particularly if those components are generic or descriptive of the goods or services, especially when the marks viewed in their entirety are not deemed similar.