Delhi HC passes interim order restraining PB’s DD Free Dish from using ‘Dish’ trademark

MUMBAI: The Delhi High Court has allowed an appeal by direct to home (DTH) operator Dish TV to restrain Prasar Bharati from using the trademark ‘Dish’ for its free DTH service DD Free Dish.

In an interim order, Justice Rajiv Sahai Endlaw restrained the public service broadcaster from infringing the trademark of Dish TV India by adopting the mark ‘DD Free Dish or any other mark incorporating the word ‘Dish’ in it during the pendency of the suit.

Justice Endlaw also stated that a public sector enterprise is not expected to use another’s trademark. “Rather, I am dismayed that the defendant, a public sector enterprise, indulged in using another’s trademark 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,” the judge said.

The court has granted three months time to Prasar Bharati to inform its customers or subscribers of the new name. It also stated that the Prasar Bharati officials should mull whether it is worthwhile to contest this litigation at the cost of the exchequer.

Dish TV, represented through senior advocate Sandeep Sethi and lawyer Sudeep Singh, has sought for permanent injunction restraining Prasar Bharati from infringing its trademark ‘Dish TV’ and from passing off the defendant’s services as that of the plaintiff by the adoption of the name/mark ‘Free Dish’.

Prasar Bharati contended that there is no similarity between ‘DD Free Dish’ and ‘Dish TV’ and there is no possibility of anyone being misled. It said that ‘Dish’ is a generic word used to describe equipment which receives the satellite signals and every DTH platform requires a Dish Antenna for receiving its signals.

The court said even though the defendant’s mark has the word ‘DD’ which is associated by all concerned with Doordarshan, but “considering the complex public-private partnerships / ventures and different business modules prevalent today, it cannot be said that the same is incapable of breaking the connection or identity which is bound to be formed in the minds of consumers or public at large…”

“It is well-nigh possible for the consumers/subscribers to form an opinion that the plaintiff, in association with Doordarshan, is providing certain free channels also and may result in the consumers/subscribers wanting the paid channels of the plaintiff also to be telecast free.

“There can be similar other myriad opinions which can be formed because of such association. The entire law of trademarks is to prevent the same from happening and once the possibility of such opinions/impressions being formed is found to exist, the law has to intervene and stop infringement,” the court said.

The matter has been listed before the Joint Registrar on 24th July for scheduling the date of trial.