In the recent past, the issue of the usage of the abbreviation 'KSRTC' by the states of Kerala and Karnataka has appeared in the headlines in relation to the trademark infringement contentions. The dispute concerns the "Karnataka State Road Transport Corporation" and "Kerala State Road Transport Corporation" as both these bodies are using the same abbreviation, i.e. KSRTC, to represent their bodies for decades now. The dispute concerning the same is pending before the judicial bodies, and multiple contentions will be raised by both the parties; however, the author here would like to delve into the analysis of section 12 of the Trademark Act that allows for the grant of same trademark to different entities which may appear as an amicable solution under the current circumstances.
Section 12 of the Trademark Act 1999
Before delving into an analysis of the section 12, it has to be taken into account that both the parties in the current matter have already obtained registration for trademark "KSRTC" a few years back. Therefore, the question would be whether this concurrent usage by the parties should subsist or not?
Section 12 of the Trademark Act explicitly provides that the Registrar may allow the registration of an identical or similar trademark in favour of two different entities providing identical or similar goods and services in the cases of honest concurrent usage or any other special circumstance that he may deem fit. Although the interpretation of the phrases "honest concurrent usage" and "any other special circumstance" is not an explored entity in India so far, however, the author would delve into their respective meaning through a judicial analysis.
Honest Concurrent Use
The High Court of Bombay, in Kores (India) Limited vs. Khoday Eshwarsa and Son, summarised the factors to be considered in establishing honest concurrent usage. The following were the factors stated by the court:
- "The honesty of the concurrent use.
- The quantum of concurrent use shown by the petitioners having regard to the duration, area and volume and trade and to goods concerned.
- The degree of confusion likely to follow from the resemblance of the applicants' mark and the opponents' marks.
- Whether any instance of confusion have in fact been proved.
- The relative inconvenience which would be caused to the parties and the amount of inconvenience which would result to the public if the applicants' mark is registered."
In the current case, it has to be taken into account that several states, other than the parties, are using abbreviations of their transport authority names in the same manner as the parties are using it. The parties are merely using the acronym of their respective organization names, which does reflect an honest usage by both the parties. Even the buses of both the states travelling through the territorial jurisdiction of the other are using the same trademark for decades now. Furthermore, there is no definite evidence that either of the parties or the public have any particular inconvenience in a simultaneous registration. In addition, it may be contented that if simultaneous use is not permitted because of the familiarity between the trademarks, the public would face greater uncomfortable conditions as the people of the both the states are already familiar and associated with the mark and buses of their respective states for decades now.
In the light of the factors of confusion laid down by the Supreme Court in Cadila Healthcare Limited vs Cadila Pharmaceuticals Limited, the likely confusion caused by the simultaneous use could be seen. Both the marks in the current case are identical, and are used for the services of the same nature. The buyer classes for both services are diverse and cover a wide range of levels of education and care. However, there remains substantial difference as far as other factors are concerned. It has to be taken into account that the operational routes and the performance of both these entities in the market are different. In addition, the purchase of tickets for the services of both companies also has minimal confusion since the full name of the company, in the online purchase, is listed on the website and very limited circumstances apply for offline purchasing as the two services cover the same routes due to their particular focus in the state at only minimal instances. In addition, the buses of both the entities contain their identifications on their numerical plates, dispelling any fear of confusion. The degree of confusion is therefore small and all the factors of honest concurrent usage could be satisfied.
Other Special Circumstances
Whilst the registrar has undefined discretion under this head, in London Rubber Co. Ltd. v. Durex Products, the Supreme Court considered, in its decision on other circumstances, the marking to be, inter alia, the name of the firm and its large use period as relevant factors. In the immediate scenario, KSRTC is only an abbreviation of the organization's name and is used for decades. This, together with low-probability confusion and concerns of public interest, strongly supports the simultaneous registration of the trademark.
Conclusion
Although it is the court's responsibility to determine whether the current circumstance falls under the spectrum of section 12 of the Trademark Act or not, however according to the study and analysis made by the author, this is likely an ideal case for concurrent use. It is essential to allow only limited monopoly on marks in order to reduce the cost of searching for the consumer. In the event of a government-owned standard transport entity with minimum confusion potential, the delicate cost-benefit balance struck by the trademarks would seriously be imbalanced by the monopoly of a single state over the mark of the KSRTC. This very market failure is addressed through a concurrent usage practice, and henceforth, according to the author, the circumstance does fall under the spectrum of section 12. If the court allows this concurrent usage, then it can result in an amicable solution as both the parties would be allowed to use the trademark without harming the interest of the public.
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