Case Title: Kerala State Road Transport Corporation (KSRTC) v Karnataka State Road Transport Corporation
Case No: (T)O P(TM)/176, 177 & 178/2023 (ORA/166,167& 168/2015/TM/CHN)
Decided on: 12th December, 2023
CORAM: THE HON’BLE MR. JUSTICE SENTHILKUMAR RAMAMOORTHY
Facts of the Case
In order to correct the Register of Trademarks, the Kerala State Road Transport Corporation (KSRTC) filed a judicial case. The word mark “KSRTC,” which had been registered in Classes 16 and 37, was the main source of dispute. KSRTC was first established in 1937 as the Travancore governmental Transport Department and changed its name to Kerala State Road Transport Corporation in 1965 as a result of a governmental policy decision. KSRTC emphasized that it has been using the acronym “KSRTC” as a trademark for a long time and that it has registered the trademark in Classes 37 and 39 as of March 27, 2015. The Karnataka State Road Transport Corporation (Karnataka SRTC) obtained registration for the KSRTC mark in classes 12, 16, and 37, claiming usage dating back to 1973.
This led to a dispute, which KSRTC found. KSRTC filed a lawsuit in retaliation, claiming superior rights as the trademark’s original user. One claim made by KSRTC was that Karnataka SRTC’s acquiescence plea was untenable. KSRTC argued that registration of the mark should be used as the starting point for calculating the five-year statute of limitations during which a party may be considered to have consented to the use of a trademark, rather than the date of actual use. Additionally, Karnataka SRTC stressed that the mark’s use is restricted geographically. KSRTC contended that the use of the mark by Karnataka SRTC should be limited to goods and services inside the state of Karnataka, citing Section 12 of the Trademarks Act.
Legal Provisions
The case is governed by the legal provisions outlined in Section 57, 34, 33, 12 of the Trade Marks Act, 1999.
Issues
Has the petitioner acquiesced in the use of the marks by the first respondent, considering the statutory period of 5 years for acquiescence under Section 33 of the Trade Marks Act, 1999, and if so, does such acquiescence affect the petitioner’s challenge to the use of the marks?
Courts analysis and decision
Section 33 of the Trade Marks Act, 1999 served as the foundation for the court’s ruling. The court observed that Karnataka SRTC was permitted to use the “KSRTC” mark, and Kerala SRTC had consented to this usage under Section 33. The court emphasized again that Karnataka SRTC had no right to object to Kerala SRTC’s use of the previous mark, citing Sub Section (2) of Section 33. As a result, the court ordered that the two public sector enterprises carry on with their own operations and live in harmony. Kerala SRTC argued that the five-year statute of limitations under Section 33 should begin on the day of registration. The court disagreed, stating that this interpretation went against the clear meaning of the clause.
Rather, the court examined the case’s facts, noting that Kerala SRTC had not disputed knowledge of the mark’s use, and Karnataka SRTC had claimed to have been using it since 1974. Taking these factors into account, the court invoked Section 33 and came to the conclusion that neither Kerala SRTC nor Karnataka SRTC could annul the registration of Karnataka or object to the use of an earlier mark. The Karnataka SRTC was acknowledged by the court as having a right to receive the advantages of Section 12 of the Act. This clause gives the Registrar the authority to allow several owners of similar goods or services to register identical or similar trademarks.
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Written by- Rupika Goundla
