Netafim Ltd. vs Jain Irrigation Systems Limited

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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).",

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,

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.,

The Appellant submitted that since the year 1967, it extensively used the trademarks NETAFIM as well as  (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,

 (TWO DROPS LOGO) dating back to the year 1983 in France. The earliest active registration for the mark (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  (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 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 “TMRâ€), 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.",

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 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.,

The Appellant submitted that the Respondent No. 2, vide his Order dated November 23, 2019 refused registration of the Appellant’s mark",

 (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.,

The Appellant submitted that it is the prior adopter of the mark  (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 (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  (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].",

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.",

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  (TWO DROPS LOGO), internationally as well as in India.",

The Appellant submitted that the Respondent No. 2 erred in relying on judicial precedents that had no application in the facts and circumstances of,

Appellant/Applicant Mark,Respondent No.1/Opponent Mark

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