Background
As things stand, embroiled in a tug of war are two States—Kerala and Karnataka over the right to use an acronym/abbreviation “KSRTC” trade mark, its emblem and nickname “Aanavandi”, which means an elephant vehicle, for their respective road transportation corporations providing services to the general public for decades now. The Kerala State Road Transport Corporation started using the abbreviation “KSRTC” when they started the services in 1965, while Karnataka State Road Transport Corporation commenced services in 1974 and started using the abbreviation since then. Apparently, they have been using the same area for parking purposes, operations and management and booking counters.
The case got reignited recently when a press release[1] was issued by Kerala that the Trade Marks Registry had given a final verdict to use the abbreviation “KSRTC” in its favour. However, subsequently, Karnataka SRTC issued a statement, saying the “reports are factually incorrect as we have not received any such notice or order from the Central Trade Mark Registry as claimed until today”. To my mind, there is no such order granting any exclusive rights over the trade mark “KSRTC” to one State over the other as on date.
The trade mark public search report by the Controller General of Patents, Designs and Trade Marks under the Ministry of Commerce and Industry, which clearly mentions that Kerala and Karnataka have the rights to use “KSRTC”. Furthermore, the rectifications filed by Kerala SRTC against Karnataka SRTC’s registrations are pending before the IPAB (Intellectual Property Appellate Board)(now the Madras High Court, after abolition of the IPAB) without determination. Consequently, till the determination of the same, there is no bar against the use of the acronym by either of the States.[2]
Law of the land
(i) Abbreviations of descriptive words/trade name
“14. McCarthy on Trademarks and Unfair Competition (3rd Edn., Vol. 2) states that:
The names of a product or service itself what it is ― is the very antithesis of a mark. In short, a generic name of a product can never function as a trade mark to indicate origin. The terms “generic” and “trade mark” are mutually exclusive…. The concept of “generic name” and “trade name” are mutually exclusive. Thus, if in fact a given term is “generic”, it can never function as a mark to identify and distinguish the products of only one seller (Para 12.01).
An abbreviation of a generic name which still conveys to the buyer the original generic connotation of the abbreviated name, is still, “generic”.
“Acronyms of generic names are often used interchangeably with the full generic name and recognised as equivalent ….”
“If the abbreviation is not recognisable as that original generic term, then the abbreviation is like a fanciful mark and protectable. [Para 12.12(1)]”
“As with misspelling of descriptive terms, a misspelling of a generic name which does not change the generic significance to the buyer, is still ‘generic’. [Para 12.12(2)]”[3]
(ii) Prior use
As both entities have been using the abbreviation KSRTC for a very long time and both have valid and subsisting registrations over the said mark, one of the most important facts of such cases would be priority of use. It has been reported that Kerala trumps Karnataka in this respect, as the use of the abbreviation by Kerala dates back to 1965 whereas Karnataka can establish its use from the mid-1970s only.
In a recent case, namely, Peps Industries (P) Ltd. v. Kurlon Ltd.[4], the Delhi High Court states that:
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… (i) Rights of registered owner of the trade mark though exclusive, are subject to various provisions and thus not absolute.
(ii) The rights of a person alleging passing off the goods of the other party as that of its own, emanate from the common law and not from the provisions of the Trade Marks Act and thus, independent from the rights conferred by the Act.
(iii) The right of the registered owner of the trade mark is not higher in order to right of the person using an identical trade mark or resembling thereto in relation to the similar goods and services if the other party has been continuously using the said trade mark prior to the user of the trade mark by the registered owner. The user by other party has to be continuous, distinct from the user which is separate, isolated or disjointed and requires the commercially continuous use of mark in relation to the same goods or services. A defendant seeking to set up a defence of prior use under Section 34 of the Trade Marks Act has also to prove the volume of sales. Mere issuance of an advertisement would not constitute user of the mark.
Kerala mainly relied on the “first user” principle elaborated in Section 34[5] of the Trade Marks Act. According to the principle, the proprietor of a registered trade mark cannot prevent the use of a similar or identical mark by another party which had commenced the use of the same prior registration.
(iii) Honest concurrent use
Given the emotive regard both States have towards the abbreviation, a reasonable compromise could perhaps be found in Section 12 of the Trade Marks Act, which provides for the Registrar to allow for the coexistence of both trade marks for honest and concurrent use. It has been well explained as below:
- Registration in the case of honest concurrent use, etc.— In the case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trade marks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.
In London Rubber Co. Ltd. v. Durex Products Incorporated[6], it was stated that:
- … (2) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.
(3) Where separate implications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other, in respect of the same goods or description of goods, the Registrar may refuse to register any of them until their rights have been determined by a competent court.
In Kores (India) Ltd. v. Khoday Eshwarsa & Son[7], the Court laid down in para 11 the following tests for determining the honest concurrent user:
(1) The honesty of the concurrent use.
(2) The quantum of concurrent use shown by the petitioners having regard to the duration, area and volume of trade and to goods concerned.
(3) The degree of confusion likely to follow from the resemblance of the applicant’s mark and the opponent’s marks.
(4) Whether any instance of confusion have in fact been proved.
(5) The relative inconvenience which would be caused to the parties and the amount of inconvenience which would result to the public if the applicant’s mark is registered.
Conclusion
As of today, both States forge ahead using the abbreviation with their respective logos. In the current state of affairs, Karnataka and Kerala could not be more in antipodal directions. While the former is a saffron State, the latter has voted in the communist red. However, despite some ideological differences, the two neighbours share a right neighbourly relationship and tend to resolve their dispute through amicable talks. Therefore, battles over intellectual property rights that bear great historical and cultural significance have the potential to be resolved through the principle of coexistence. This will enable the institutional heirlooms of the past to thrive and prosper for the generations to come.
† Intellectual Property Lawyer, Member, FICCI IP Forum; Editor, The Trade Mark Reporter, International Trademark Association (INTA), LLM in Intellectual Property Law, Queen Mary University of London (QMUL). Author can be reached at yash0843@gmail.com.
[1] <https://indianexpress.com/article/explained/how-kerala-won-battle-for-ksrtc-trademark-7344760/>.
[2]<https://www.newindianexpress.com/states/kerala/2021/jun/06/ksrtc-not-exclusive-to-kerala-says-union-ministry-report-2312357.html>.
[3] SBL Ltd. v. Himalaya Drug Co., 1997 SCC OnLine Del 571, para 14.
[5] Section 34, Trade Marks Act. <http://www.scconline.com/DocumentLink/X9bqcPzT>.