Karnataka, Kerala, And A History Of IPR Disputes Between Them

The southern states of Karnataka and Kerala have had curiously comparable pasts. They both were carved out of the Madras presidency on 1 November 1956.

While Karnataka inherited the legacy of the erstwhile state of Mysore, the former kingdoms of Travancore and Cochin are integral to the history of Kerala.

Within the two regions exist numerous state-run institutions that are heirlooms of their princely pasts. These contemporaneous associations have, over the years, been causes of great contention between the two states.

KSDL Vs KSIE

Recent conflicts between the states have largely been in the domain of intellectual property. One such dispute involves two soap manufacturing companies, namely: the Karnataka Soaps and Detergents Ltd (KSDL), the Karnataka state enterprise that manufactures the renowned ‘Mysore Sandal Soap’ and the Kerala State Industrial Enterprises (KSIE), the Kerala state enterprise that manufactures the iconic ‘Kerala Sandal Soap’.

'Mysore Sandal Soap' was first manufactured in 1918 after S G Shastry, a chemist from the Indian Institute of Science (IISc), formulated a method to make use of the oil produced from the large resource of leftover sandalwood, which could not be exported to Europe courtesy the first World War.

S.G Shastry gave the soap its unique oval shape in an attempt to distinguish it from the rectangular-shaped soaps that dominated the market at that time.

Under the patronage of the Mysore Maharaja, Sri Krishnaraja Wadiyar IV, the soap was well advertised and consequently grew in popularity all across the country and the world.

It has since become a distinctive symbol of the culture and heritage of Mysore.

In 1980, the government merged the sandalwood oil unit in Mysore and Shivamogga and incorporated them under the company name Karnataka Soaps and Detergents Limited (KSDL).

The 'Kerala Sandal Soap' was first produced in the Kerala Soap Institute, Calicut. In 1918, the institute was shifted to a sprawling 4-acre location, where it began producing sandal soaps for Lord Willingdon, who was the viceroy of India between 1931 and 1936.

Post-independence, the company used to supply soaps to the president in the Rashtrapati Bhavan.

After suspending its operations between 2002 to 2010 due to financial difficulties, it was revived and amalgamated under the Kerala State Industrial Enterprises in 2010.

In 2015, the KSDL filed a suit at the Kozhikode district court, accusing KSIE of design infringement.

As can be seen, the packaging of both soaps do seem similar in terms of colour and ornamentation. However, as the suit filed was that of 'design infringement', the case primarily dealt with the shape, colour and configuration of the actual soap rather than the packaging.

KSDL claimed that KSIE had infringed their original registered design of 'Sandal Soap (oval shape)' by applying a deceptively similar design to Kerala Soaps.

It accused KSIE of attempting to dishonestly capitalise upon the reputation and goodwill that 'Mysore Sandal Soap' had accrued through several years of continuous use of the registered design.

In its defence, KSIE denied any resemblance between the shape of their product and that of 'Mysore Sandal Soap' as it claimed that the configuration was honestly and independently conceived by its predecessor with no reference to any other product in the market.

It further claimed that the oval shape had become Public Juris (of public right), and therefore KSDL could not be solely attributed to the same.

In the judgement, the judge agreed with the KSIE argument of Public Juris. He further stated that the uniqueness of the 'Mysore Sandal Soap' was its oval shape with ridges on either side along with the 'Sandal Soap' embossed on one side and 'Government Soap Factory' with emblem embossed on the other.

Whereas he found that the 'Kerala Sandal Soap' was pillow-shaped with cuts on either side rather than ridges, the embossing on the top was 'Kerala Sandal Soap' and on the bottom was 'Government of Kerala Enterprise'.

He further noted that while the 'Mysore Sandal Soap' had a flat base, the base of 'Kerala Sandal Soap' was slightly curved.

After making these observations, he concluded that the products do not have identical shapes or configurations, and therefore there was no infringement of the registered design.

Both the KSDL and KSIE have registered trademarks for the packaging of their respective soaps. Shastry had designed the rectangular packaging of the 'Mysore Sandal Soap' to resemble jewellery boxes.

The soaps inside used to be wrapped in tissue paper to mimic the manner in which jewel shops used to deliver jewels.

Sharaba — a mythical creature with the body of a lion and the head of an elephant — was chosen as the logo of the company. The same packaging can be seen in advertisements as far back as the 1930s.

KSIE states that the label and logo of the 'Kerala Sandal Soap' was designed by the legendary artist Raja Ravi Varma who was part of the aristocracy in the erstwhile state of Travancore. The early packing of Kerala Soaps used to bear beautiful lithographs of the paintings made by the celebrated artist.

Interestingly, calendars made for both the Kerala Soap Institute, Calicut and the Government Soap Factory, Bangalore, also bore lithographs of Hindu gods and goddesses painted by Ravi Varma.

'K’ SRTCs

Karnataka and Kerala recently battled over exclusive rights to use the acronym ‘KSRTC’ for their respective road transport corporations.

Kerala claimed that the judgement of the seven-year-old trademark battle was delivered in their favour by the Central Trade Marks Registry and that they now have the exclusive rights to use the abbreviation KSRTC, the emblem with the two elephants and the nickname ‘Anavandi’.

Kerala’s erstwhile Travancore State Transport Department which was constituted by the Travancore government in 1938, was later re-established as the Kerala State Road Transport Corporation (KSRTC) on 1 April 1965.

Similarly, the Mysore Government Road Transport Department, which was inaugurated in the erstwhile Mysore state in 1948 and was made into the Karnataka State Road Transport Corporation (also KSRTC) in 1973 with the symbol of the Mysore state — the Gandaberunda (the mythical two-headed bird) as the emblem.

The battle began in 2013 after Karnataka obtained a trademark registration for KSRTC and issued a notice to Kerala asking the state to stop using the abbreviation.

Following this, Kerala too applied for trademark registration and challenged the grant of the same to Karnataka at the Intellectual Property Appellate Board (IPAB) in 2015.

Kerala mainly relied on the ‘first user’ principle elaborated in section 34 of the Trademarks Act. According to the principle, the proprietor of a registered trademark cannot prevent the use of a similar or identical mark by another party which had commenced the use of the same prior registration.

It substantiated its claim by using old photographs of buses, bus depots and visuals from a 1969 Malayalam film Kannur Deluxe where a Kerala KSRTC bus can be seen plying between Kannur and Thiruvananthapuram.

However, according to Karnataka, Kerala‘s claim is invalid as the IPAB, which passed the verdict, was abolished by a central government ordinance dated 4 April 2021, and all pending applications were to be transferred to the High Court for adjudication.

Given the emotive regard both states have towards the abbreviation, a reasonable compromise could perhaps be found in Section 12 of the Trademarks Act, which provides for the registrar to allow for the coexistence of both trademarks for honest and concurrent use.

Currently, both states continue to use the abbreviation with their respective logos.

Today, Karnataka and Kerala could not be more diametrically opposed. While the former is a saffron state, the latter has voted in the communist red.

However, despite ideological differences, the two neighbours share a cordial relationship and tend to resolve their dispute through amicable talks.

Therefore, battles over intellectual property that bear great historical and cultural significance have the potential to be resolved through the principle of coexistence.

This will enable the institutional heirlooms of the past to thrive for the generations to come.