Abbreviations as Trademarks: A Misguided Road to Guaranteed Conflict

I. Introduction

According to the definition and meaning laid down by the World Intellectual Property Organization (WIPO), a trademark is recognized to be a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. In India, the Trademarks Act, 1999, is the principal governing statute and helps oversee every essential aspect of it right from the preliminary application to the final registration. The definition² provided in the Indian context is done so in the following manner:

“trademark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours”

It is common practice in many countries around the world, including India, to use abbreviations and trademark them. Abbreviations are effective brand marks that are often more well-known than the name or brand in question. Famous Indian abbreviations like BCCI, UGC, RAW, FICCI, NOIDA, AIIMS, and others are, in fact, more recognizable than their full forms. Every one of these brands, along with several other examples such as the Indian Space Research Organization (ISRO) to Mahashian Di Hatti (MDH), from Bavarian Motor Works (BMW) to Kentucky Fried Chicken (KFC), and from Louis Vuitton (LV) to Madras Rubber Factory (MRF) and General Electrics (GE), have in a way changed and molded their strategy by adapting abbreviations to connect with consumers extra easily.

However, one of the most negative repercussions of abbreviation use from the standpoint of trademarks is when two distinct entities use the same abbreviation and both gain enviable reputation and goodwill. The unfortunate scenario that both enterprises are involved in the same industry/business or deal in similar/identical goods and services can greatly worsen such a blueprint for disaster. Another factor exacerbating the situation is that both businesses in question have been using the abbreviation in question for a long time, and neither has substantial predominance over the other in terms of prior usage. It is imperative to take cognizance, at the very outset, of the fact that the Trademarks Act of 1999 contains no specific limitation prohibiting the use of abbreviations as trademarks. Additionally, if the abbreviation in issue has developed a secondary meaning, such as a high level of reputation and goodwill, the prospects of securing such registration are considerable. In VIT University v. Bagaria Education Trust and Ors.,³ where the famous abbreviation "VIT" was in dispute, the Madras High Court, mindful of the plaintiff's reputation and goodwill, affirmed the plaintiff's sole right to use the acronym VIT as its trademark.

II. A peak into the prominent cases: The quintessential examples of the overriding ambiguity surrounding this concept

The long-standing legal dispute between the Karnataka State Road Transport Corporation (KSRTC) and Kerala State Road Transport Corporation (KSRTC) began officially in 2014 when the former began the paperwork to acquire the trademark “KSRTC” and even asked Kerala to refrain from using it henceforth. But first, it is pertinent to make note of the history behind both the corporations.⁴ On April 1^st, 1965, the erstwhile Travancore State Transport Department was rebranded Kerala State Road Transport Corporation. In Karnataka, the Mysore Government Road Transport Department (MGRTD), which began operations in 1948, was renamed the Karnataka State Road Transport Corporation in 1973.⁵ With 28,000 permanent employees and 38,000 retirees, the Kerala RTC is the state's largest public employer (2020).⁶ For decades, the two RTCs provided services to each other's states until 2014. They even used the same facilities and space for booking offices, parking and logistical operations. Until now, both states even used the ‘KSRTC' abbreviation on all buses and websites of their respective RTCs.

In light of this, Kerala recently claimed that the Trade Marks Registry granted them the right to use the acronym KSRTC, the insignia, and the nickname 'Anavandi' in its' verdict.' Karnataka responded by claiming that it has not received such an order and is looking into legal options.⁷ However, both Kerala and Karnataka have legitimate and enforceable trade mark rights in the acronym KSRTC, and trade mark rectifications made by Kerala against Karnataka's registrations before the IPAB (now ruled defunct/abolished) are still pending. Kerala, on the other hand, had filed a rectification against Karnataka's aforementioned trade mark registration no. 1213897 for the mark with the IPAB Chennai in 2015, with the number ORA/166/2015/TM/CH/5533.⁸ The rectification is still ongoing, according to reports, and has now been transferred to the High Court due to the IPAB's collapse. It's also worth noting that both entities have co-existing registrations in class 37 for the KSRTC abbreviation/mark, though Kerala has a word-mark registration rather than Karnataka's device mark.

Another prominent case that garnered widespread media coverage in addition to a deep-rooted scrutiny from jurists, was the WWF (World Wide Fund for Nature) v. WWF (World Wrestling Federation) case.⁹ When it was established in 1961 as the World Wildlife Fund, the charity, whose president emeritus was the Duke of Edinburgh, registered the initials WWF as a trademark.¹⁰ Although it changed its name to the World Wide Fund for Nature in the UK and several other countries in 1989, the initials WWF and the famous panda emblem are still used in advertising efforts around the world.¹¹ It filed a lawsuit to safeguard its global brand and reputation from any "nefarious" ties to professional wrestling, namely the World Wrestling Federation which was also being recognized by the acronym WWF.¹² It was contended that there was no evidence of public confusion between the wrestling federation and the charity in addition to them being used in entirely separate domains/ classes, and that enforcing the 1994 agreement rigidly would be an unreasonable restraint of trade and a violation of the European Convention on Human Rights' right to commercial freedom of speech. The federation argued that it should be permitted to keep the initials in its website address and logo at the very least. However, the judge hearing over the case stated that the federation should have understood that using the initials for those reasons was pretty harmful.

In recent times, Indian courts have seen and adjudicated a number of cases wherein the abbreviations have been exploited as trademarks by one party and infringed by the other in order to achieve profit, goodwill, and confusion of association. The Hon’ble Delhi High Court's decision in Larsen and Toubro Limited vs. Lachmi Narain Trades and others,¹³ which included the abbreviated trademark 'LNT'/'LandT,' used this concept of acquired secondary importance as a deciding component. The Court considered the plaintiff's evidence and concluded that "LandT" had acquired a secondary meaning exclusively associated with the plaintiff as a result of its continuous use for nearly 50 years, whereas the Respondents, who had been in business for some time, had only recently begun using the abbreviation "LNT." The Court in S.B.L. Ltd. vs. Himalaya Drug Co.¹⁴ emphasized the overall similarity test while evaluating the broad and significant aspects of both marks as well as the effect on consumers. The plaintiff's liver tonic was labelled "Liv. 52," while the defendant's mark "LIV-T" included homoeopathic and ayurvedic remedies. The word 'Liv' was an acronym for liver in both cases. The Court decided that the abbreviation ‘Liv' for liver was generic or widely used and thus came under the purview of public jurisprudence. As a result, the Court denied both parties an exclusive ownership right. In the case of Bharat Biotech International Ltd. vs. Optival Health Solutions Pvt. Ltd. and Ors.,¹⁵ the Delhi High Court outlined the nature of acronyms that could be used as trademarks. The facts in contention in this case concerned the acronym TCV – the full form of which is Typhoid Conjugate Vaccine – which was referred to by the plaintiff as 'TYPBAR-TCV' and the defendant as 'ZYVAC-TCV'. The vaccine, dubbed 'Typhoid Conjugate Vaccine' by the Court, was frequently used in the trade, particularly in the medical profession. As a corollary, because 'TCV' is a generic abbreviation that is also descriptive of the things it refers to, it is ineligible for trademark protection. According to the Courts' rulings, an abbreviation that is generic, prevalent in trade, or has a descriptive meaning in and of itself cannot be registered or enforced unless it is combined with another distinctive and non-descriptive term, such as TYBAR-TCV/ Liv. 52. The comparison is drawn here based on the overall perception of the trademark, not merely the abbreviation.

III. Prior-user registration: Sec 34 as a defence

In disputes over abbreviations as trademarks, it has been commonly and periodically observed that the biggest boon, as well as bane, for either party is the protection provided for by Section 34 of the Trademarks Act. Section 34¹⁶ of the Trademarks Act, 1999, protects the rights of trademark owners who have not registered their trademark but have been using it for a period of time before anyone else. According to this section, no provision of the Act allows a registered trademark owner to infringe on the rights of a person who has been using an identical trademark for a significant period of time prior to the later trademark's first use or registration. In essence, this means that an owner of a trade mark does not have the right to prevent another group from using an indistinguishable or comparable imprint that began before the owner's user or date of enlistment. This is commonly referred to as the "First User" or “Prior User” rule, which is a distinctive provision of the Trade Marks Act. The primary fundamentals of this provision are:

• The use of an imprint indistinguishable from or nearly identical to the enrolled mark by a third person should be corresponding to the products and enterprises for which the principal referenced imprint is enlisted;
• The use should be a consistent use of the trademark in India;
• The trademark should be used by the trademark owner.
• The imprint has most likely been in use since a date prior to the use of the enrolled trademark or the date of enrollment, whichever comes first.

The word "use" has a tremendous amount of power. The term "use" as defined by section 34 of the law connotes continuous use rather than discontinuous and inconsistent use. Who was the first to use the imprint or name is frequently a point of contention. When allowed, the protection available to an earlier user under section 34 of the law has the effect of diminishing the guarantee accorded to an enlisted mark. As a result, the foundation of prerequisites under section 34 necessitates relevant materials demonstrating prior use. There must be a strong manifestation of the imprint being used in relation to the products and businesses for which the enlisted mark is also being used. For example, the Revelation of marketing predictions is an appropriate material for establishing a consistent course of imprint usage prior to the date on which the enrolled user began using the imprint. The High Court of Delhi deliberated upon the meaning of section 34 and whether it can be used as a defence, along with descriptive trademarks, in the case of Peps Industries Private Limited vs. Kurlon Limited.¹⁷ The plaintiff party pursued an announcement of perpetual order precluding the respondent from assembling, selling, making available for purchase, advertising, or offering types of assistance directly or indirectly in merchandise and enterprises under the enlisted mark ‘NO TURN' or in any way leveraging the plain mark ‘NO TURN' through this suit filed under the close watch of the Hon’ble Delhi High Court. In furtherance, the respondent asserted that it was the first user of the trademark ‘NO TURN'. In M/s R. J. Components and Shafts vs. M/s Deepak Industries Limited,¹⁸ the Delhi High Court revisited the doctrine of the prior user of a trademark under Section 34 and revised the law so that the prior user has priority over the later user in trademark matters, even if the prior user has not registered the trademark.

IV. Conclusion and recommendations

If an abbreviation is not prevalent in trade activities, it contains distinctive focus element(s), its full form has no descriptive meaning, or it is proven with strong evidence that the abbreviation has cultivated distinctiveness or secondary salience through use, it may be given protection. We may get a general feel of the concepts that are used when assessing whether an abbreviation deserves to be registered as a trademark or not by glancing at the judgments of various Courts over time, and some of them are as follows:

• Acquired distinctiveness or secondary significance as a result of the trademark's long-term, extensive, and exclusive use: This is a case-by-case determination based on the information presented.
• The anti-dissection principle and the ‘dominant feature' criteria are used to determine the overall perception of the trademark.
• Since no single enterprise is allowed to claim monopoly or exclusive rights over a generic term, the principle of publici juris is taken into account. The comprehensive description of the abbreviation is scrutinized to see if it directly alludes to the trademarked goods or services.

The issue with trademark protection of an abbreviation is not the registration; rather, it is the enforcement of the rights that causes the most complications. Many sectors (such as pharmaceuticals, electronics, and many others) are adopting brand names that are derived from or composed of generic phrases that are routinely used in trade. Because one business cannot claim monopoly over a generic trademark in such situations, it is combined with a distinguishing element, which is why it is simpler to protect an abbreviation as part of a composite mark (as a whole) rather than protecting and enforcing it singly.

A very obvious and distinct example of this problem is KSRTC v. KSRTC case. Here, the conflict over the KSRTC abbreviation creates a dilemma that goes beyond the issue of mark registration. Both Kerala and Karnataka have genuine and enforceable rights to the term/mark in this case, and the mark can be said to have developed distinctiveness and secondary meaning in their respective states. As a result, in some circumstances, registering such marks with severe disclaimers that limit their use to a specific geographical zone may be an acceptable compromise. For a long time, the Registry has been known to give registrations with disclaimers about location, such as registering marks with the caveat that they will only be used for services in the states of Karnataka and Kerala.

As a direct consequence, not only would this solution allow entities like Kerala State Road Transport Corporation ("Kerala") and Karnataka State Road Transport Corporation ("Karnataka") to use and register their trademarks, but it would also prevent undue monopolistic practices of an abbreviation that could be useful to others. In such circumstances, a compromise might be reached in which one organization employs a highly stylized emblem to distinguish itself from the others', or uses dots/periods between the alphabets, e.g. K.S.R.T.C.

Based on the aforementioned considerations, it can be concluded that the protection of acronyms under trademark law is inadequate and confusing. If the acronym's original phrase qualifies for trademark protection, it may be possible to obtain trademark protection for it. However, if the acronym is a condensed version of a generic or descriptive term, it will be ineligible for trademark protection under current laws. Because the importance of trademarks in marketing is currently at an all-time high, the scope of acronym protection must be expanded in order to keep up with the contemporary reality. It makes it easier for customers to learn about the brand. As a result, it is imperative that balanced rules be implemented that allow a wider scope for the protection of acronyms while also ensuring their viability in the contemporary environment.

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