06 March 2024 Trademark Laws in India >> Intellectual Property Rights  

In a recent trademark infringement action, Prasar Bharati, operating under the brand name Doordarshan (hereafter "Doordarshan"), the public broadcaster of India, unsuccessfully challenged Dish TV India Limited's (hereafter "Dish TV") use of the term "Dish" within its brand name "DD Free Dish". The Delhi High Court (the "Court") ultimately determined that "Dish" constituted a generic term in the DTH service industry, precluding Doordarshan's claim of exclusive trademark rights.

Doordarshan's Contentions:

Doordarshan asserted that Dish TV's utilization of "Dish" infringed upon their registered trademark "Dish TV." They argued that "Dish" represented a prominent and essential element of their trademark, and its incorporation by Dish TV was likely to create confusion amongst consumers in the marketplace.

Dish TV's Rebuttal:

Dish TV countered by asserting that "Dish" is a generic term within the DTH service industry, referring to the parabolic antenna technology employed for signal reception. They argued that exclusive ownership of such a generic term could not be established. Furthermore, Dish TV emphasized the distinctiveness of their brand "DD Free Dish" due to the inclusion of "DD" and "Free," effectively differentiating it from Doordarshan's "Dish TV."

Court's Reasoning and Decision:

The Court, applying the well-established principle of holistic trademark evaluation, rejected Doordarshan's arguments. The Court reasoned that trademarks must be assessed in their entirety, not dissected based on individual components. While acknowledging the presence of "Dish" in both trademarks, the Court determined that the complete brand names, "Dish TV" and "DD Free Dish," presented sufficient distinctiveness due to the inclusion of "DD" and "Free" in the latter.

Furthermore, the Court acknowledged the generic nature of "Dish" within the DTH service industry, thereby negating Doordarshan's claim of exclusivity. The burden of proof rested with Doordarshan to establish a likelihood of confusion among consumers. In the absence of such evidence, coupled with the presence of distinct branding elements employed by Dish TV, the Court ruled in favor of Dish TV, setting aside the injunction previously imposed.

Significance of the Decision:

This case underscores the critical role of generic terms in trademark law. Entities cannot establish exclusive rights over terms commonly used to describe the nature of a product or service. The onus lies with the plaintiff, in this instance Doordarshan, to demonstrate that a competitor's use of a generic term leads to consumer confusion. The Court's decision reinforces the importance of creating trademarks that transcend generic terms and emphasizes the effectiveness of incorporating additional elements to bolster brand distinctiveness.

  COMMERCIAL COURTS ACT, 2015    COMPANIES ACT, 2013    TRADE MARKS ACT, 1999