Trademark of DISH in danger : Our Legal World
In the instant case the plaintiff i.e DISH TV filed a suit for permanent injunction against the defendant i.e Doordarshan from infringing the trademark of ‘DISH’ of the plaintiff and by passing on its services as that of plaintiff by adoption of name or symbol of ‘FREE DISH ‘. The plaintiff prayed that the term DISH was first coined by them and that it is an integral part of their company and trademark. Also the plaintiff contented that not only the defendants have used the term DISH in their services but also have used the logo which quite clearly resembles that of the plaintiff’s , this would create a deceptive picture in the minds of plaintiff’s customers and will cause them huge loses in monetary terms as well as interns of their goodwill.
The defendants however denied any infringement of the trademark saying that the term DISH is publici juris and no one can claim exclusive rights on it.
The court rejected the claim of the defendants by noting that the term DISH is not publici juris therefore not generic to DTH services, also the court was of the opinion that since the defendants managed to provide DTH services from 2004-2014 without using the term DISH and when also there are other competitors in the market providing the same service without using the above mentioned term then it is not open for the defendant to claim that the use of word DISH is indicative of the characteristic of services being rendered by the defendants.
The court relied upon the test given in United Biotech Pvt Ltd where the test was to see whether the defendant has used the part of plaintiff’s registered trademark so clearly that the mark used indicates a prima facie case of infringement. Therefore the Delhi High Court granted injunction in favor of the plaintiff and against the defendants to prevent the latter to use the word ‘DISH’ for providing its services. The Single Judge Bench comprising of Justice Sahay Endlaw criticized the defendants for not taking any actions despite repeated complaints made by the plaintiff. It was also noted that the defendants were a public sector enterprise and the same act of infringing plaintiff’s trademarks and also not responding to their complaints is not expected.