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‘KSRTC’ Trademark: Kerala Acquiesced in Use of Mark

Recently, the Madras High Court dismissed the plea of the petitioner, Kerala State Road Transport Corporation, opposing the use of the trademark, ‘KSRTC’ by the respondent, Karnataka State Road Transport Corporation, as it had acquiesced in such use despite being aware of the same.[1]

The petitioner sought rectification of entries pertaining to the registration of the trademark, ‘KSRTC’, obtained by the respondent. It was asserted that the petitioner had been using the mark since its formation in 1965 and, hence, was the prior user.

To the respondent’s contention as to the petitioner’s acquiescence in the use of the mark for a continuous period of 5 years under Section 33 of the Trade Marks Act, 1999, the petitioner averred that the said period commenced from the date of registration of the respondent’s trademark and not from date of use. The Court rejected this interpretation of Section 33, holding that the date of registration bore significance in certain cases for determining constructive knowledge, but in the present case, both the parties, being public sector transport corporations, had knowledge about each other’s operations.

It followed that the petitioner had knowledge of the use of the mark by the respondent since the year 1974, and despite this fact, the rectification petitions were filed by the petitioner only in mid-2015. The Court remarked that Section 33 applied to both parties; the petitioner couldn’t oppose the use of the mark by the respondent under sub-section (1), and the respondent couldn’t oppose the use of the earlier mark under sub-section (2). It was held that “the solution is for both public sector undertakings to coexist peacefully and run their respective businesses”.

Additionally, the respondent was said to be entitled to the benefit of Section 12 of the 1999 Act, which empowers the Registrar to allow registration of identical or similar trademarks in respect of the same or similar goods or services in case of “honest concurrent use or of other special circumstances”. The Single Judge Bench of Justice Senthilkumar Ramamoorthy stated that “Section 12 does not require neck-to-neck concurrency, and it is sufficient if the relevant trademarks have been used concurrently over a material length of time. Even otherwise, for reasons discussed, this case would fall within the scope of ‘other special circumstances’ in Section 12”.

[1] Kerala State Road Transport Corporation (KSRTC) v. Karnataka State Road Transport Corporation [(T)OP(TM)/176, 177 & 178/2023]