Vijay Kumar Makyam, Technical Member (Trade Marks)
1. This is the Appeal against the order and decision of Registrar of Trade Marks, Delhi dated 23/11/2019in the matter of Opposition No.166784 by M/s. Jain Irrigation Systems Limited., filed against Application No.780830 in class 11 in the name of NETAFIM LTD (Appellant herein).
2. The Appellant states that this Order was communicated to the Appellant’s Attorneys vide Official Letter bearing No. TOP-OR/10474 dated January 06, 2020 which was received at their offices on January 13, 2020.
BRIEF FACTS OF THE CASE
1. As per the written submissions of the Appellant, the Appellant is a part of the “Netafim Group” that was established in the year 1965 and is a well-known global leader in the field of innovative irrigation-based solutions and water technologies that solve problems and raise productivity, while protecting the environment and saving water.
2. The Appellant submitted that since the year 1967, it extensively used the trademarks NETAFIM as well as “IMAGE” (TWO DROPS LOGO) globally, upon and in relation to its business and has also secured registrations for the same with the earliest registration (now expired) for the mark “IMAGE” (TWO DROPS LOGO) dating back to the year 1983 in France. The earliest active registration for the mark “IMAGE” (TWO DROPS LOGO) under No. 1309484 is also in France and dates back to the year 1985. In India, the Appellant is the registered proprietor of the mark “IMAGE” (TWO DROPS LOGO) under No. 1266913 since February 13, 2004 in Classes 9, 11, 17 and 37, with use claimed since June 30, 1982.
3. The Appellant submitted that the present application for registration of the mark (TWO DROPS LOGO) in Class 11 under No. 780830 was filed by NetafimYiftah Irrigation Equipment & Drip Systems [the Appellant’s predecessor-in-interest] with the Office of the Trade Marks Registry, New Delhi (hereinafter referred to as the “TMR”), on December 04, 1997 with use claimed since June 30, 1982. The Appellant’s mark was advertised in Trade Marks Journal MEGA 3 VOL-E dated October 14, 2003 at page No. 1022, made available to the public on December 29, 2003.
4. The Appellant submitted that on July 2, 2004, the Appellant’s Attorneys received an Official Letter dated May 14, 2004 from the TMR serving a copy of the Notice of Opposition dated February 20, 2004 filed by the Respondent No. 1 against registration of the subject mark. The Respondent No. 1 admittedly claims to have commenced use of the mark “IMAGE” since 1987. Upon conclusion of the pleadings, the Respondent No. 2 listed the matter for final arguments on January 23, 2019 whereat both the parties put forth their detailed arguments in support of their respective cases followed by filing of their written submissions.
5. The Appellant submitted that the Respondent No. 2, vide his Order dated November 23, 2019 refused registration of the Appellant’s mark “IMAGE” (TWO DROPS LOGO) under application No. 780830 on the ground that it had failed to prove the user claim and ordered that the opposition under No. 166784 abates. Aggrieved by the Respondent No. 2’s Order dated November 23, 2019, the Appellant preferred the present Appeal before this Learned Board.
6. The Appellant submitted that it is the prior adopter of the mark “IMAGE” (TWO DROPS LOGO) and that the Respondent No. 2 failed to appreciate that the Appellant is prior in point in time in its adoption as well as use of the mark “IMAGE” (TWO DROPS LOGO). The Respondent No. 2 erred in not taking into account the Appellant’s significantly prior, longstanding and continuous use of the mark “IMAGE” (TWO DROPS LOGO) for over 50 years worldwide and for nearly 40 years in India. The Respondent No. 2 erred in not applying the ‘first in the (world) market’ principle as laid down and followed by the Courts in the country including the Hon’ble Apex Court. N.R. Dongre&Ors. vs. Whirlpool Corporation &Anr. [(1996) 5 SCC 714, Para No. 18]; MilmetOftho Industries &Ors. vs. Alergan Inc. [(2004) 12 SCC 624, Para Nos. 4-5 and 9]; Gandhi Scientific Company vs. Gulshan Kumar [CS OS No. 1192/2007; Para Nos. 35-38]; Neon Laboratories Limited vs. Medical Technologies Limited &Ors. [(2016) 2 SCC 672, Para Nos. 9 and 11]; S Syed Mohideen vs. P. SulochanaBai [(2016) 2 SCC 683, Para Nos. 30.4 and 30.5].
7. The Appellant also submitted that it is the Registered Proprietor of the mark (TWO DROPS LOGO) and that the Respondent No. 2 failed to appreciate that the Appellant is already the registered proprietor of the mark (TWO DROPS LOGO) in India under Application No. 1266913 since February 13, 2004 in Classes 9, 11, 17 and 37, with use claimed since June 30, 1982.
8. The Appellant submitted that it had filed Cogent documentary evidence and that the Respondent No. 2 erred in holding that there is not a single relevant document in support of the Appellant’s user claim when in fact, there was cogent documentary evidence on record comprising communications with various established entities in India including the Government of India establishing the Appellant’s significantly prior adoption and use of the trade mark “IMAGE” (TWO DROPS LOGO), internationally as well as in India.
9. The Appellant submitted that the Respondent No. 2 erred in relying on judicial precedents that had no application in the facts and circumstances of the instant case. The Respondent No. 2 in rendering the impugned order dated November 23, 2019 erroneously relied upon judicial precedents wherein the applicants had claimed use prior to the date of actual use of their mark as opposed to the present case wherein the Appellant has clearly put forth material evidence establishing use of the mark “IMAGE” (TWO DROPS LOGO) even much prior to the user claimed under the subject application. Gandhi Scientific Company vs. Gulshan Kumar [CS OS No. 1192/2007; Para Nos. 35-38]
10. The Appellant submitted that the Respondent No. 2 erred in adopting an extremely narrow and hyper-technical interpretation of the definition of ‘use’ in contravention with the spirit and essence of the Trade Marks Act, 1999 (the ‘Act’). The Respondent No. 2 failed to appreciate that Section 2(2) of the Act casts a wide interpretation of the term ‘use’ of a mark and specially includes “printed or other visual representation of the mark” as use. The Respondent No. 2 thus, erred in ignoring the evidence put forth by the Appellant and passing the order dated November 23, 2019. Hardie Trading Limited &Anr. vs. Addisons Paint and Chemical Limited [(2003) 11 SCC 92, Para Nos. 41-43].
FINDING OF THIS BOARD
11. The Respondent No.1& 2 despite service chooses not to appear before us and place its pleadings. We have examined the Registrar’s (Respondent No.2) order decision dated 23/11/2019 and reviewed the submissions of the Appellant.
12. It is noted that the Respondent No.2 had examined all the documents filed and referred to them in its order along with page numbers, however concluded that inconsistent statements made by the Appellant as to the exact date of usage and referred judicial precedents that held if wrong user claimed or applicant unable to substantiate the user the mark, Registration should not be proceeded with or removed from the Register if wrongly get Registered. We are to state that each and every case stands on its own circumstances as held by the Apex Court in its various judgments and we cannot generalise these judicial precedents, the judicial precedents referred by the Respondent No.2 in its order are good for the circumstance of those cases and definitely not applicable to the present circumstances of the case.
13. We are unable to comprehend Respondent No.2 Order as it recorded and referred to the several documents placed before it by the Appellant, however stated that Appellant had not proved the user claimed by it and thus rendering no value to the documents placed by the Appellant. It might be true that Appellant would have given multiple dates with regards to usage of the mark in its various Affidavits and Applications; however the documents speak for themselves. Since the Appellant is multinational company having used the mark in several jurisdictions and the usage claims in each jurisdiction varies and thus there might be some error on part of the Appellant in filing Affidavits before the Respondent No.2.
14. The only reason that Respondent No.2 cited to refuse the Registration is that the user claimed by the Appellant is inconsistent and does not corroborated by evidence. The first part of the statement that inconsistency in making user claims by Appellant is owing to the international presence; the claims were made of the usage in India and in foreign countries and thus the Respondent No.2 might have noted such inconsistency in the user claims of the Appellant and it appears to be true. The second part of the statement that the usage is not corroborated by evidence, the Respondent No.2 seems to have failed in appreciating the documents filed before it and thus concluded that there is no proper evidence filed by the Appellant. The very order narrated all the documents filed by the Appellant before the Respondent No.2 which included enquires, letters addressed to and by Appellant and foreign Registrations for the similar mark.
15. It is admitted position that the Respondent No.1/Opponent had started using the mark only in 1987 and that the Appellant mark is used much prior to it; however there is inconsistency in the claiming the exact usage of the mark by Appellant in India. Further we have compared the marks in the following table and found that the marks are completely different and cannot hold to be similar at all.
16. Admittedly there is no civil suit for infringement of the mark is also filed by the Respondent No.1 against the Appellant usage of the mark till date (close to 50 years of usage) and thus acquiesced its rights if any considering the similarities in the mark and thus as per Section 33 of the Trademark Act, 1999, the Respondent No.2/Registrar cannot refuse the R
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egistration of the mark even assuming the marks are similar. 17. Further we have noted that a exactly similar mark “IMAGE” is Registered in favour of the Appellant vide Application No.1266913 in classes 9, 11, 17 and 37 claiming usage since 30th June 1982 vide Certificate No.641849 dated 14th June 2007 through the Respondent No.1 had filed Rectification Application for the same and pending for adjudication before Respondent No.2. 18. We are of the opinion that technical deficiencies cannot deprive of the valuable rights to the proprietor of the mark. The Respondent No.2 would have decided the matter on the merit instead refusing the Registration of the mark for inconsistent claims of user of the Appellant. 19. Taking into consideration of the above, the Appeal is hereby allowed. Impugned order dated 23/11/2019 passed by the Respondent No.2/Registrar of Trade Marks is set aside, Opposition No.166784 by Respondent No.1 M/s. Jain Irrigation Systems Limited is hereby dismissed and the Application No.780830 in class 11should be preceded further in accordance with law. There is no order regarding costs.