Introduction
Abbreviation usage for brand names during the course of business or trade is a common practice. The abbreviated brand names are considered rather simplistic and are more famous than their original names itself. It goes without saying that IIT, IIM, IRCTC, IPL or BCCI are known for these acronyms and one would have the toughest time giving their full forms. For a word/term to qualify for protection as a trademark and avoid legal dispute, it should not be a common term related to the trade or be descriptive of the nature or kind of goods and services provided. To its contrary, an abbreviation is considered as both descriptive and non-distinctive as the full forms are usually common to the trade it is related to.
Over the years, court rulings have created a basic set of principles for an abbreviation to qualify for the protection as a trademark. The abbreviation may be granted protection if-
- it is not common to the instant trade or when read as a whole,
- it has certain distinctive elements attached to it or,
- the full form is not descriptive in nature, or
- it has acquired secondary significance or,
- distinctiveness owing to the extensive and exclusive use of the abbreviation however, the same needs to be substantiated by providing proper evidence.
These principles have been developed through court observations in cases such as VIT University, LNT or LandT for Larsen & Toubro limited, VACPAC for electrodes that are vacuum packed, and so on.
The Problem
Even with the above principles in place, there could be problems with granting exclusive rights to acronyms due to its inherent nature of being descriptive of the business or trade when read with the full forms. Another possible conflict could be about usage of one abbreviation by two different entities in the same business or trade and in relation to the same goods or services. Additionally, the entities could have been using the same abbreviation for a long time and must have gained reputation and distinctiveness for their goods or services under the mark in their respective place of operation.
Such a dispute situation has been dealt with in the past and it presented itself again in the trademark battle for acronym “KSRTC” between the state of Kerala and the state of Karnataka. Reportedly, both the states have been using the acronym “KSRTC” for their respective road transport services since decades. For Kerala it is – Kerala State Road Transport Corporation and for Karnataka the full form is- Karnataka State Road Transport Corporation. Indeed, the states had to fight this dispute at some point.
Background
It is purported that the state of Karnataka filed an application to register acronym ‘KSRTC’ along with the label representing Gandaberunda (two-headed mythical bird) for trademark protection and after getting the registration, it called upon the state of Kerala to discontinue using the said acronym for their public transport in 2014. This step triggered the dispute as 7 years long battle for securing the abbreviation as after this, the state of Kerala approached the Trademark registry to get ‘KSRTC’ registered for its public transport but received its registration for acronym ‘KSRTC’, the logo of two elephants and the word ‘Ana Vandi’ in 2019. The same mark has been registered in favour of both the states and both the states continue to enjoy rights over the same abbreviation as neither registration seems to have been cancelled.
Interestingly, the state of Kerala had been using its rights over the acronym against usage by the state of Karnataka even before getting it registered on the pretext of it being a prior user. The state of Kerala had been using ‘KSRTC’ since 1965 while Karnataka’s Road transport was renamed to Karnataka SRTC from Mysore Government Road Transport Department (MGRTD) only in 1973.
Issues concerning Registrability
The primary issue that arises in this case is that the full form of abbreviation ‘KSRTC’ is undeniably descriptive of the nature of services provided by the states and therefore raises concerns on its registrability in the first place. The court in cases such as Superon Schweisstechnik India Ltd. v. Modi Hitech India Ltd. and S.B.L. Ltd. v. Himalaya Drug Co., has ruled those abbreviations that convey the customers the generic nature of the abbreviated name, are also considered generic and therefore not entitled to protection.
According to this proposition, ‘KSRTC’ is not entitled to protection as a trademark however, the extensive and continuous use of the abbreviation in the state of Kerala and the state of Karnataka in respect to particular services affords the acronym a possibility of having obtained a secondary meaning because customers in the respective states identify road transport services as KSRTC and therefore it has acquired immense goodwill and reputation.
Moving further
Since both the states have been using the abbreviation for a very long time, both have acquired secondary meaning in their respective states and both have valid registrations, the question arises whether both the marks can be used simultaneously. By virtue of section 12 of the Trademarks Act, 1999, registration can be granted to identical marks to different entities for same or similar services in case of honest concurrent use or of other special circumstances.
Taking note of abbreviations adopted by other states for their road transport services have been in the similar manner such as UPSRTC or RSRTC and therefore, neither Kerala or Karnataka can be said to have been dishonest in using ‘KSRTC’. Also, both the states have been using the mark for decades and there are no instances of confusion caused in public due to the similar mark. At this point, the public would have gotten comfortable with the acronym and discontinuation of ‘KSRTC’ for state road transport would cause more inconvenience than the two states using it simultaneously. Having said this, Kerala has an upper hand in the entire situation given the fact that it is the prior user of ‘KSRTC’.
Conclusion
The real problem with protection of abbreviations as trademark persists even after granting protection, which is the problem of enforcing rights over it. Since these are generic in nature, monopoly is almost ineffective as in the case of ‘KSRTC’. Even though both the state of Kerala and the state of Karnataka have registered ‘KSRTC’ for their respective state road transport corporations, none of them will be able to enjoy monopoly since it is generic and the abbreviation is related to very common services. In the interest of the general public, the amicable decision would be to allow both the states to use the ‘KSRTC’ mark because discontinuation would be immensely harmful for either of the states.
Recently, the state of Kerala claimed to have received approval from the Controller General of Patents Design and Trademarks regarding Kerala’s exclusive right over abbreviation ‘KSRTC’, its emblem and nickname ‘Ana Vandi’ on the basis of ‘first user’ rule and will be exercising its rights over the mark against anyone who uses the abbreviation. However, a senior officer from Karnataka SRTC claimed that they have not received any official communication regarding the same and therefore, will explore its legal options to continue the tussle over ‘KSRTC’. Therefore, in a situation wherein the dispute does not get resolved, it could go to High Court for litigation owing to abolishment on Intellectual Property Appellate Board.
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