MUMBAI: The Delhi High Court on Tuesday granted an injunction to direct-to-home (DTH) operator Dish TV (plaintiff) against Prasar Bharati (defendant), preventing the public broadcaster from using the word 'Dish' for its free-to-air DTH platform DD Free Dish. The defendant was handed three months’ time to inform its subscribers of the new name, so as to not cause any confusion.
Terming it as prima facie case of infringement, the single bench of Justice Sahay Endlaw refused to accept the pubcaster’s claim of publici juris.
The plaintiff had instituted this suit for permanent injunction restraining the defendant from infringing the trade mark “Dish TV‟ 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 had argued that the world ‘Dish’ was first appropriated by them and is a key component of its trademark. The defended opted for a logo similar in nature, even containing the dish that was a central to the Dish TV logo.
The defendant refuted the charge of similarities in the logo and argued that the exclusive right to the Dish logo cannot be claimed by anyone.
The court was not in agreement with the defendant’s argument of the word “Dish‟ being 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 others providing same service from using the same for the reason of its being essential for them for describing their service.
“As far as the contention of the counsel for the defendant regarding public interest is concerned, it cannot be lost sight of that the defendant, after ten years changed the name of its service from DD Direct+ to DD Free Dish. It is not the case of the defendant that in doing so, any such consequence followed. The defendant has also not disclosed the need for such change. There is no reason for the defendant to now, upon being asked to make the change instead of affecting the same voluntarily, suspect any such harm to the public. Moreover, the said aspect can be taken care of by providing sufficient time to the defendant to make its customers / subscribers aware of the change including on its own telecast,” the order read.
“Rather, I am dismayed that the defendant, a public sector enterprise, indulged in using another’s trade mark 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. It is at least now expected that the officials responsible for conduct of the business of the defendant will bestow attention thereto and take a call, whether it is worthwhile to contest this litigation, obviously at the cost of the exchequer,” Justice Sahay Endlaw further stated.
