Kerala State Road Transport Corporation is amongst India's oldest state owned and regulated public road transport service which started back in 1938. It was earlier known as the Travancore State Transport Department, and only in 1965, it was re-structured and came to be known as the Kerala State Road Transport Corporation.
Karnataka State Road Transport Corporation, started in the year 1948, was previously known as Mysore Government Road Transport Department. It was renamed Karnataka Transport Corporation in 1973.
The two states in question used the mark 'KSRTC' and co-exist cordially until 7 years back, when Karnataka SRTC secured the registration of the trademark 'KSRTC' along with a label representing a 'Gandaberunda' (two-headed mythical bird) in the year 2014. The long legal battle was initiated by Karnataka when it sent a notice to Kerala in 2014, stating that the abbreviation had a place with just Karnataka and that the Kerala State Road Transport Corporation should cease usage of that particular acronym. Since Kerala was also using the abbreviation KSRTC, the Karnataka SRTC sent a legal notice to the Kerala SRTC asking it to cease using their acronym 'KSRTC'.
Upon seeing the legal notice by Karnataka SRTC, Kerala also applied for the registration of its KSRTC mark along with the logo depicting two elephants and the name 'Ana Vandi'. However, the TM Registrar pointed out that the abbreviation 'KSRTC' already stands registered in the name of the Karnataka SRTC. This dispute between the two states continued in the court for seven years.
Finally in June 2021, Kerala won the trademark battle against Karnataka for the usage of the acronym KSRTC, which used to represent both the Kerala State Road Transport Corporation and the Karnataka State Road Transport Corporation. After this decision by the TM Registrar, which is in favor of Kerala, infers that this particular acronym will presently be utilized by Kerala State Road Transport Corporation. There was significant importance attached to the acronym along with the nickname as well i.e., 'Aanavandi' which means an 'elephant cart' which historically has a place with just Kerala, not to Karnataka and certainly not to the two states involved.
In the end, as per the Trademarks Act, 1999, the acronym of KSRTC as well as the nickname 'Aanavandi' was given by Trademark Registry for the sake of Kerala State Road Transport Corporation.
According to the Trade Marks Act, 1999, registering of an acronym as a trademark is not restricted. Although, using any abbreviation, like in this particular case, has acquired a secondary meaning which may be important to the state in any way like, historical significance or immense reputation or goodwill, then the chances of obtaining a registration of that trademark would indeed seem to be fair.
However, as seen in the KSRTC dispute, the registration of such an acronym would lead to cognate legal issues involving someone who also use that particular acronym/abbreviation.
REASONING OF THE TRADEMARK REGISTRAR
The concept relied upon by the TM Registrar in this particular dispute is the 'First user rule'. The state of Kerala was successful in providing evidence of its use of the acronym and its mark from the year 1965 by producing photographic evidence of old buses, bus depots, pages from memoirs of former Transport Ministers and related reports of their transport services.
Ironically, which has been the reason for many reports suggesting that a movie helped the state of Kerala win this dispute, there was a submission of a scene from a Malayalam film i.e., 'Kannur Deluxe' made in the year 1969. The scene consisted of a Kerala SRTC bus travel between the cities Kannur and Thiruvananthapuram. And as mentioned above, Karnataka's use of the mark came almost a decade later i.e., from 1973, hence, it became a subsequent user of this particular acronym/mark.
Coupled with the above-mentioned reasoning, it is crucial to analyze the importance on the concept of secondary meaning. While the acronym itself 'KSRTC' may not show any distinctiveness, it is pertinent to note that the said acronym has over time acquired a secondary meaning within the states. What has been considered is that the time and scale of use, it is likely that the abbreviation KSRTC denotes very different things. And in this case, Kerala SRTC along with the nickname 'Aanavandi' was given precedence over the Karnataka SRTC. As seen in this scenario, the acronyms/marks may be concluded to have a certain secondary meaning for a particular state.
IS KARNATAKA BARRED FROM USING KSRTC?
It is pertinent to note that Karnataka is not expressly barred from using the abbreviation, for which Kerala SRTC would need to approach the court in order to put a sanction on Karnataka on using the acronym 'KSRTC'.
There is no express provision that bars co-existence of marks, as the ones in question. The key point to be considered is meeting the criteria set in Sections 9 and 12 of the Trade Marks Act, 1999, which is provided in the statute as, "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."
Hence, as has been the case since the years KSRTC has been used by both the state parties, if both parties will be said to have rights over this acronym, then the amicable use of the acronym/mark/abbreviations may continue peacefully and uninterrupted.
This dispute between the two states i.e., Kerala and Karnataka, has laid down many important concepts to be pondered upon by the legal fraternity. As this has not been resolved by a Judicial Institution, this cannot be considered as a legal precedence, but surely has enlightened on certain rules, approach and practices to be followed in Trademark Cases. Not only the first use rule has been used in this particular dispute, but significant importance has been attached to the historical significance of the subject matter, which was an acronym/mark in the present case. Trademark is a type of IPR, and it is crucial to note the importance of a particular IPR to the section of people it belongs to. This dispute has in no way disrupted the peaceful understanding between the two states and can even jointly use the acronym in a disciplined manner.
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