A single bench judge of the Delhi High Court Justice Sahay Endlaw granted injunction to Dish TV against Doordarshan in order to prevent the latter from using the word 'DISH' for its services.
The plaintiff, Dish TV instituted a suit for permanent injunction against Doordarshan restraining them from infringing their trademark ‘DISHTV’ and from passing off the defendant’s services as that of the plaintiff by adoption of the name/mark 'FREE DISH' and also for ancillary reliefs.
It was contended by the plaintiff that the word 'DISH' was first coined by them and it formed a very integral and distinctive element of their trademark. The defendant adopted a logo deceptively similar to that of the plaintiff inasmuch the defendant’s stylized logo contains the device of a dish, similar to that in the plaintiff’s logo.
The defendant denying any possibility of deception argued that 'DISH' is publici juris and no one can claim exclusive right to it. They said Section 17 of the Trade Marks Act, 1999, says that ‘registration of a trade mark confers rights in the mark as a whole and not in part or fragments of the mark’. The plaintiff chose to name its brand product with a generic word ‘DISH’ which would not prevent any person entering the market the right to use the said term to identify the product in question. If the plaintiff had not desired so, they ought to have branded its product with a unique name.
The Court denying the defences under Section 30 of the Trade Marks Act to be available to the defendant, said that when the defendant and other brands too are able to provide the said service without using the word ‘DISH’ from 2004-2014, then it is not open to the defendant to say that the use of the word 'DISH' by them is indicative of the kind or characteristic of services being rendered.
The defendant’s claim of publici juris was also rejected by the court and it noted that ‘Dish' is not generic to DTH service and/or common to the trade of DTH service, for it to be said that adoption thereof by plaintiff would prevent others providing the same service from using the same, for the reason of it being essential for them for describing their service.
In United Biotech Pvt. Ltd., and Laxmikant V. Patel, the test applied was of use by the defendant of a prominent part of the plaintiff's registered trademark. The court relying upon the ratio laid down in this judgment held that the mark used by the respondent does make a prima facie case of infringement.
While granting the injunction, the court criticized the delay in any action taken by the defendant even after repeated complaints by the plaintiff. The court disconcertedly remarked that the defendant, despite being a public sector enterprise, indulged in using another's trademark when such indulgence was not expected of a public sector enterprise according to the proclaimed litigation policy of the Government.