Should technical deficiencies, deprive a proprietor of a mark, of his valuable rights and registration be refused?

02 Jul Should technical deficiencies, deprive a proprietor of a mark, of his valuable rights and registration be refused?

Netafim Ltd.                    V/S               Jain Irrigation Systems Limited

The present suit is filed by the appellants Netafim Ltd., before the Intellectual Property Appellate Board Delhi Registry Cum Bench before Honourable Judges Manmohan Singh (Chairman), Lakshimidevi Somanath and Makyam Vijay Kumar Members (T) against the order and decision of Registrar of Trade Marks, Delhi dated 23/11/2019 in 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. [OA/54/2020/TM/DEL, Decided On: 21.01.2021]

The appeal is against the order and decision of Registrar of Trade Marks, Delhi dated 23/11/2019 in 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).

The appellants state that they are 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. The appellants have submitted that since the year 1967, they have extensively used the trademark NETAFIM as well as  (TWO DROPS LOGO) globally in relation to their business and have also secured registrations for the same with the earliest registration (now expired) for the mark  (TWO DROPS LOGO) dating back to the year 1983 in France. In India, the appellants are the registered proprietor of the mark (TWO DROPS LOGO) under No. 1266913 since February 13, 2004 in Classes 9, 11, 17 and 37, with use claimed since June 30, 1982.

The appellants submit that their application for registration of the mark (TWO DROPS LOGO) in Class 11 under No. 780830 was filed with the Office of the Trade Marks Registry, New Delhi and on July 2nd 2004, the appellants received an Official Letter from TMR of the Notice of Opposition filed by the respondents against registration of the subject mark. The appellants submit that vide order dated November 23rd 2019 their registration of the mark (TWO DROPS LOGO) was refused on the ground that it had failed to prove the user claim and ordered that the opposition abates. Aggrieved by the order the appellants preferred the present appeal before this Learned Board

The appellants have submitted that they are the prior adopter of the mark (TWO DROPS LOGO) and that the Office of the Trade Marks Registry, New Delhi failed to appreciate that the appellants are prior in point in time in their adoption as well as use of the mark  (TWO DROPS LOGO). The appellants further highlighted that they were 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. Further according to the appellants the Office of the Trade Marks Registry, New Delhi had 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 appellants state 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 present court stated that it had examined the Registrar’s order decision dated 23/11/2019 and reviewed the submissions of the appellant. The court opined that it was unable to comprehend the order passed by the Trade Marks Registry, New Delhi 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. The court also asserted that since the appellant was 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 Trade Marks Registry. It court further stated that having compared the marks of the appellant and the respondent it found that the marks were completely different and could not be held to be similar at all.

The present court concluded that technical deficiencies cannot deprive of the valuable rights to the proprietor of the mark and that the registrar would have decided the matter on the merit instead of refusing the registration of the mark for inconsistent claims of user of the appellant. Thus taking into consideration of the above, the appeal was hereby allowed and the impugned order dated 23/11/2019 passed by Registrar of Trade Marks was set aside, opposition No. 166784 by respondent M/s. Jain Irrigation Systems Limited was dismissed and the application No. 780830 in class 11 was to be preceded further in accordance with law.