Discussing the latest controversy round Samsung India’s opposition to it’s employees’ utility in search of to register ‘Samsung India Thozhilalar Sangham, below the Commerce Union Act, Bharathwaj examines earlier situations the place commerce unions have locked horns with trademark legal guidelines and assesses whether or not the Emblems Act extends safety to proprietors in opposition to the usage of their marks in any commerce union’s title. Bharathwaj is a third 12 months LLB Pupil at RGSOIPL, IIT Kharagpur and loves books and IP. His earlier posts will be accessed right here.
Thou Shalt not Register your Commerce Union with a Identify within the Likeness of My Trademark
By Bharathwaj Ramakrishnan
Not too long ago, a Writ Petition (right here) regarding registration of a commerce union of the employees of Samsung India with the title “Samsung India Thozhilalar Sangham” (Thozhilalar Sangham means “Labour Union” in Tamil) has been into consideration earlier than the Madras Excessive Courtroom. The Writ petition was filed by the commerce union in opposition to the Registrar of Commerce Union for not registering them below the Commerce Union Act. Later, Samsung India Electronics Pvt Ltd, proprietor of the trademark “Samsung” filed an impleading petition in search of to be made a celebration to the proceedings. It argued that because the commerce union had political ties, the corporate’s repute could be affected if the commerce union is allowed to make use of the corporate’s title. Notice: Part 16 of the Commerce Union Act permits a registered commerce union to have a political fund which then can be utilized in “promotion of the civic and political pursuits of its members” thus it’s clear that Commerce Union Act envisions a political function for a registered commerce union. Because the case stands, Samsung India has been impleaded as a celebration to the Writ Petition (see PDF right here) by the Madras HC. For added context; it must be said that trademark infringement has been one of many methods wherein corporations have gone after unions, particularly within the U.S. (see right here and right here) (extra on this beneath). With this mentioned, the current controversy raises a query of whether or not it will be trademark infringement below the Indian legal guidelines, if a commerce union was to register itself with the corporate’s trademarked title in it. Likewise, it additionally makes one ponder whether the legislation permits corporations to lift such opposition below the Commerce Union Act by asserting their Emblems.
Setting the Scene, Enter Commerce Union Act:
For some further background context, as reported, just lately the employees of Samsung India have been conducting a strike for his or her calls for for a greater pay and, most significantly, to register their commerce union below the Commerce Union Act. There have considerations raised on the affect this strike might need on the funding local weather of the state (see right here, right here, right here, right here, right here for Retd. Justice Chandru’s interview on this situation offers a extra historic, political, method to the problem).
The registration of commerce unions is ruled by the Commerce Unions Act 1926, a pre-colonial laws. Sections 5 to eight of the Act are essentially the most related for our evaluation. Part 5 offers with the appliance for registration of a commerce union whereby it states, it would embody “the title of the commerce union and the tackle of its head workplace”. Part 6 offers that related Guidelines will make clear sure particulars, together with the requirement for specification of the title of the commerce union. Part 7(2) which for my part is a vital provision, mandates the Registrar to refuse registration of a commerce union if the title is similar to an current commerce union, or within the Registrar’s opinion, deceivingly just like an current commerce union. In such conditions, the Registrar ‘shall’ require alteration of the title. Lastly, Part 8 imposes a statutory obligation on the Registrar to register the commerce union if the necessities below the Act have been fulfilled. Likewise, it should even be famous that post-registration, the Commerce Unions Act additionally imposes regulation on the style wherein the commerce unions funds will be spent (Part 15) whereas additionally granting some immunity (Part 17,18).
Indian Courts on Emblems and Commerce Unions:
Instances involving logos and commerce unions are few and much between (if the readers are conscious of every other circumstances not mentioned right here that cope with this situation, please depart a remark. But, there are just a few which may make clear how courts have handled commerce unions registrations within the context of Trademark Legislation. The Delhi H.C.’s choices in Kedarnath vs J.Okay. Organisation (1997) (Hereinafter JK) and Meals Company of India Employees Union vs Meals Company of India (2014) (Hereinafter FCI) are illustrative and may shed some gentle on the problems at hand despite the fact that the factual conditions in each these circumstances don’t match as much as the Samsung case. Additionally it is essential to notice that the courts, in these circumstances, have emphasised the truth that commerce union don’t have interaction in any commerce; and {that a} related argument has been made within the present case.
Within the J.Okay. case, the query was whether or not commerce unions can oppose the registration of a Trademark. Right here, a commerce union registered with the title J.Okay. Group had members utilizing a trademark consisting of the letters ‘J.Okay.’ or the phrase ‘JAYKAY’ of their enterprise. The commerce union filed an opposition continuing in opposition to the registration of the mark ‘JAYKAY’ by an organization making locks. The Courtroom concluded that because the phrase “Any particular person” is used below Part 21 of the Trademark Act, a commerce union can oppose the registration of a mark. Nevertheless, the Commerce Union fell within the second argument that the petitioner superior that the Commerce Union in itself was not partaking in any course of commerce, and it was pursuing the case on behalf of members who have been promoting items and companies below J.Okay and no member who was utilizing the mark was get together to the go well with.. But in one other a part of the judgment (para. 21) the Courtroom additionally learn Part 2(h) of the Commerce Union Act to state that the commerce union could have locus standi for an opposition of a Trademark within the context of commerce they’re involved with. Thus it’s barely unclear as to the place of legislation that’s emanating from this case.
The FCI case, which is a case regarding Part 7 of the Commerce Union Act, involved two commerce unions with related names. Right here, the Courtroom noticed in relation to IP and commerce union registration that “For my part, the aforesaid judgment, within the context of mental property rights, would don’t have any utility to commerce unions, which the counsel for the plaintiff Union additionally accepts should not have any trademark or proper because the mental property proper in an entity carrying on enterprise. Somewhat, as aforesaid, the Commerce Unions Act is an entire code in itself and thus the provisions thereof can’t be in contrast with the provisions of The Corporations Act and/or the mental property rights of an entity carrying on enterprise.”
The Courtroom drew a distinction between corporations registered below the Corporations Act having frequent legislation rights of their logos or commerce names and commerce unions which lack the identical rights of their title or marks because it doesn’t have interaction in commerce.
Trademark Battles between Commerce Unions and Corporations:
Within the U.S, Trademark Act has been utilized by corporations to go after the commerce unions. Not too long ago, Dealer Joe’s and Medieval Instances have sued their revered unions for trademark infringement (see one of many circumstances right here for a abstract dialogue of each circumstances see right here). The essential distinction between these two circumstances and the current case at hand is that the unions have been promoting goodies like tote baggage, cups, and buttons with the union brand. Regardless that each circumstances turned out in favour of the unions, additionally it is essential to note the truth that within the case of Samsung India Thozhilalar Sangham, it has not been alleged that they’re promoting or taking part within the sale of any items or companies and post-registration the union could be constrained in the usage of its common funds to the particular heads offered in Part 15 of the Commerce Union Act. Moreover, the definition of “commerce union” below Part 2(h) wouldn’t permit the commerce union to have interaction in any sale of products and companies.
Commerce Union Registration and Samsung Opposition:
Coming again to the case, Samsung opposes the registration of the title, because it believes that it will be in violation of its trademark rights. Because the arguing counsel for Samsung factors out, he isn’t opposing the registration however merely the registration of the commerce union with “Samsung” in it. As seen above, the Commerce Union Act governs commerce union registration, and registration just isn’t executed below the Trademark Act. Likewise, the Commerce Union Act offers for the process for title change within the occasion the title “so almost resembles such title as to be more likely to deceive the general public or the members of both Commerce Union.” But it have to be famous that that is within the context of such deception arising in reference to a different commerce union solely (see right here (PDF)). Likewise, additionally it is clear that commerce unions are distinguished from common companies of their skill to conduct and have interaction in commerce. Thus, this absence of engagement in commerce by the commerce union may stop the appliance of the Trademark Act to the problem of commerce union registration.
I want to thank Swaraj and Praharsh for serving to me refine and edit this publish and for serving to me arrange my ideas on this situation.