Evolving Laws to protect Intellectual Property Rights
• Adoption of the name ‘Free Dish’ constitutes infringement of the trademark ‘Dish TV’
In this case Dish TV India Ltd. (plaintiff) had filed a suit for permanent injunction restraining Prasar Bharti (defendant) from infringing the trade mark ‘Dish TV’ by adopting the name/ mark ‘Free Dish’. The plaintiff contended that the word ‘Dish’ was first appropriated by them in the year 2003 and is a key mark which is being used to offer several services such as dish+, Dish TruDH+, dish dvr etc. and also as a part of its corporate name and website. The plaintiff also argued that the defendant renamed its Free to Air DTH service ‘DD Direct+’ to ‘Free Dish’, in May 2014, to capitalize on the goodwill of the plaintiff and had mala fide intent to do so. Prasar Bharti contended that there is no similarity between ‘DD Free Dish’ & ‘Dish TV’, whether phonetic or visual, therefore the possibility of consumers being misled does not arise. Further, it was also argued that confusion will not arise as there is a difference in the services and subscriber base of the plaintiff and the defendant. The defendant also argued that the word ‘Dish’ is generic or common to the trade and no one can claim exclusive right over it because it is devoid of any distinctive character. The Delhi High Court rejected the arguments of the defendant and held it to be a prima facie case of infringement. It was also held that as the defendant was providing services without using the word ‘Dish’ till 2014, it could not be argued that ‘Dish’ was being used as an indicative of the kind or characteristic of services being rendered by the defendant. It was also observed that the word ‘Dish’ was not generic to or common to the trade of DTH service. Even though the defendant’s mark was using the word ‘DD’ to denote Doordarshan, the Court observed that it could not be said that the consumers may not get confused that there may be some business structure between the defendant and plaintiff. An interim order was passed restraining the defendant from using the mark ‘DD Free Dish’ or any other mark incorporating the word ‘Dish’ in it till the pendency of the suit. The defendant was also granted a time of three months’ time to inform its subscribers of the new name for the purpose of not causing any confusion.