The Delhi Court has recently held that the word DISH may be generic to the business of cooked food or utensils, but surely not to providing television service. The plaintiff Dish TV India Ltd. instituted the suit for permanent injunction restraining the defendant Prasar Bharti from infringing the trade mark “DISHTV” and from passing off the defendant’s services as that of the plaintiff by adoption of the name / mark “FREE DISH”. The Plaintiff inter alia submitted that it is the original coiner, first adopter and prior user of the trade mark / corporate name “DISHTV” and the mark “DISH” is an integral and distinctive element of plaintiff’s trade mark. The plaintiff also claimed to be the registered proprietor of the corporate name / trade mark / logo “DISHTV” in numerous variants in Classes 9, 38, 16, 35, 42 and 41 with the first registration dating back to 15th July, 2003.
The Defendant argued dissimilarity between “DD Free Dish” and “DISHTV” and submitted that “DISH” is a generic word used to describe equipment which receives the satellite signals and no exclusive right can be claimed on the mark “DISH”. In response to Defendant’s generic argument on the word DISH, the plaintiff submitted that since the defendant have itself applied for registration of the mark “FREE DISH”, it is estopped from contending “DISH” to be generic, non-distinctive or publici juris.
The court noted that the mark “DISHTV” remained registered for the last 16 years and none including the Defendant which has been using the word “DISH” since the year 2014 objected to registration thereof. The court by relying on Section 31 of the Trade Marks Act observed that registration of the mark is prima facie evidence of the validity thereof.
The court then looked into Section 30 of the act which provides that a registered trade mark is not infringed where use thereof in relation to services indicates the kind or intended purpose of the service or other characteristics of service. The court then considered the question that whether the use by the defendant of “DISH” as part of its mark is intended to indicate the kind and/or purpose of the service being provided by the defendant. The court examined the literal meaning of “Dish” and “satellite dish” “Dish Antenna” and “Direct to Home (DTH)”
It was noted that Dish is a shallow, flat bottomed container for cooking or serving food” or “a shallow, conclave receptacle, especially one intended to hold a particular substance”. A “satellite dish is a dish shaped type of parabolic antenna designed to receive or transmit information by radio waves to or from a communication satellite”. A “Dish Antenna” is described as “common in microwave systems used for satellite communication and broadcast reception, space communications, radio astronomy and radar”. “Direct to Home (DTH)” technology enables a broadcasting company to directly beam the signal to the television set through a receiver that is installed in the house, without any need for a cable connection. DTH broadcasting service refers to the distribution of multichannel TV programme in Ku Band, by using a satellite system by providing TV signals direct to subscribers premises; for DTH connection, the broadcasting company provides a set that comprises a “dish and a receiving set”; the company beams an encrypted signal that only the set installed in a subscribers house can receive and enable viewing. The court observed that the dish shape is irrelevant inasmuch as it is merely a reflector and lens to focus on the signal. The vital part is the Low Noise Block downconverter (LNB) i.e. the equipment mounted on the front of the dish, which transmits the signal to the set top box or the receiver.
Accordingly, the court held that the word “Dish” or “Dish Antenna” is not confined to DTH service as it is common to all satellite communications and broadcasts; and, “Dish” or “Dish Antenna” is not essential to DTH service but LNB and the set top box are the most essential. The court said that the word dish only serves the purpose of focusing the signal on LNB and which can be achieved by other means also, without the “Dish”.
The court also considered that the defendant’s mark has the word “DD” which is associated with Doordarshan but considering the complex public private partnerships / ventures and different business modules prevalent today, the court held that possibility of confusion or association cannot be ruled out as the consumers might form an opinion that the plaintiff, in association with Doordarshan, is providing certain free channels. Accordingly, the defendant was restrained from infringing the trade mark of the plaintiff by adopting the mark “DD FREE DISH” or any other mark incorporating the word “DISH” in it.
DishTV obtained favourable order against the use of the mark DD FREE DISH by Omesh Puri
The article was first published in Mondaq