Madras High Court Dismisses Plea By Kerala SRTC Against Use Of “KSRTC” Mark By Karnataka SRTC, Says Both PSUs Should Co-Exist Peacefully

Justice Senthilkumar Ramamoorthy observed that as per Section 33 of the Trade Marks Act, Kerala SRTC had acquiesced in the use of the mark by the Karnataka SRTC. Similarly, relying on Sub Section (2) of Section 33, the court added that Karnataka SRTC was not entitled to oppose the use of the earlier mark by Kerala SRTC. Thus, the court asked both the Public Sector undertakings to co-exist peacefully and continue their businesses.

“The petitioner is not entitled to either seek a declaration that the registration of the first respondent's trade mark is invalid or to oppose the use of the first respondent's trade mark in relation to the goods or services to which it is being applied. Equally, as per sub-section (2) of Section 33, the first respondent is not entitled to oppose the use of the earlier mark. Thus, the solution is for both public sector undertakings to co-exist peacefully and run their respective businesses. From a public interest standpoint, there are sufficient markers of identity such as the use of the Malayalam and Telugu scripts on their buses by the petitioner and first respondent, respectively,” the court observed.

Kerala SRTC had approached the court seeking rectification of the Register of Trade Marks in relation to the word mark “KSRTC” which was registered as Trade Marks in Classes 16 and 37. It was submitted that KSRTC had its origin in the Travancore State Transport Department, established in 1937, and was later converted to Kerala State Road Transport Corporation in 1965 under a policy decision of the State.

Kerala SRTC contended that it has been using the abbreviation “KSRTC” as its trademark for a considerable period and had also obtained registration for the trademark in Classes 37 and 39 with effect from March 27, 2015. Later, upon noticing that Karnataka SRTC had obtained registration of the KSRTC mark in classes 12,16 and 37 by asserting use from 1973, the present plea was filed claiming superior rights as prior user.

Kerala SRTC contended that the plea of acquiescence was not valid as the period of 5 years should be calculated from the date of registration of the mark and not from the date of use of the mark. It was also submitted that the use of the mark by Karnataka SRTC should be limited in relation to goods and services within the State of Karnataka as per Section 12 of the Trade Marks Act.

The court rejected Kerala SRTC's argument that the period of 5 years under Section 33 runs from the date of registration and noted that the same was contrary to the text of the provision. The court noted that in the present case, Karnataka SRTC had asserted use of the mark from 1974 and even Kerala SRTC had not denied knowledge of such use. Thus, by applying Section 33 of the Act, the court observed that neither Kerala SRTC could declare Karnataka's registration as invalid nor could Karnataka SRTC oppose the use of an earlier mark.

The court also noted that Karnataka SRTC would also be entitled to the benefit of Section 12 of the Act which allowed the Registrar to permit registration by more than one proprietor of identical or similar trade mark in similar goods or services.

Thus, observing that Kerala SRTC was not entitled to rectification of the register, the court dismissed the petitions.

Counsel for the Petitioner: Mr.Bovan Cherian Varkey for M/s.Marks and Rights

Counsel for the Respondent: Mr.P.V.S.Giridhar, Senior Advocate, assisted by Ms.Pooja Jain for M/s.Giridhar & Sai, Mr.S.Janarthanam, SPC

Citation: 2023 LiveLaw (Mad) 395

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)