KERALA OR KARNATAKA, WHO OWNS THE MARK KSRTC?
After a seven-year legal battle over the legal custody of the acronym ‘KSRTC’, Kerala Claimed that it had won the battle for the exclusive use of KSRTC, which has been in use by both the State Transport Service since the 60s and 70s. Kerala State Road Transport Corporation (previously known as Travancore State Transport Department) has been India’s oldest state-operated public road transport service since 1938. It was re-established as Kerala State Road Transport Corporation in the year 1965, Karnataka State Road Transport Corporation, started in 1948,
was previously known as Mysore Government Road Transport Department. It was renamed to Karnataka Transport Corporation in 1973. In 2014 Karnataka applied for registration of mark ‘KSRTC’ along with a label representing a Gandaberunda (mythical two-headed bird) and issued notice to Kerala stating that the mark ‘KSRTC’ should not be used by Kerala Transport. This notice woke Kerala up and sped up proceedings to get custody of the Trademark. After that, Kerala approached the Trademark Registry claiming rights over the mark as its prior user.
The Trademark Registry registered the mark favoring Karnataka in 2017 and Kerala in 2019. The registration of neither of the marks got canceled. Both the states claimed that only they have exclusive rights for the Mark ‘KSRTC’. Here question arises whether either of the states should register the marks in the first place. KSRTC, an abbreviation of these two state bus corporations’ descriptive trade names, should not be registrable.
In case, If the marks acquire a secondary meaning with a particular type of use, this might change. Here, it can be said that as the people of both the states identify the marks KSRTC for their respective state bus services hence, the mark has obtained secondary meaning. Accordingly, it can be said that the mark is arguably registrable by either of the states, to begin with. As the mark is registrable by both states, the question arises whether it could be used simultaneously by both states. Section 12 of the Trademark Act, 1999 says that two similar marks can be registered in “honest concurrent use or of other special circumstances”.
Here the use of a mark by the two states is said to be honest because, in India, road transport corporations have been named in several states such as RSRTC or the UPSRTC, similarly and with the same standard manner, KSRTC has been used by both the states of Kerala & Karnataka. Here, the honest concurrent use exception is held to be not applicable, but the Registrar still has the option by invoking the element of ‘other special circumstances’ for permitting the registration. KSRTC has been in use for decades though it is just an abbreviation of the Bus services corporation’s name.
Hence there is a low likelihood of confusion and public interest concerns, which makes a strong case for warranting concurrent registration of the mark. In a case under section 12, concurrent registration is not granted. It must be determined whether the KSRTC mark used by Karnataka would amount to infringement. But As per, Section 29(5) of the Act mark by Karnataka describes the intended purpose (transportation services), kind (by road), and geographical origin (Karnataka) of the services that it provides. In such a scenario, it could be concluded that even despite the registration of the mark by Kerala, Karnataka’s use of the KSRTC mark will not amount to infringement.
Relying upon the “first user” rule, Kerala Succeeded in getting the mark ‘KSRTC’ registered. Kerala furnished photographs of its old buses, bus depots, pages from memoirs of former Transport Ministers, write-ups, and reports and proved its use of the mark from the year 1965. Interestingly, a visual was submitted from a Malayalam film of 1969, Kannur Deluxe, showing a Kerala SRTC bus plying between Kannur and Thiruvananthapuram. Since Karnataka’s use of the mark was later, i.e., from 1973, it became a subsequent user.
