Discussing the recent controversy around Samsung India’s opposition to it’s workers’ application seeking to register ‘Samsung India Thozhilalar Sangham, under the Trade Union Act, Bharathwaj examines previous instances where trade unions have locked horns with trademark laws and assesses whether the Trademarks Act extends protection to proprietors against the use of their marks in any trade union’s name. Bharathwaj is a 3rd year LLB Student at RGSOIPL, IIT Kharagpur and loves books and IP. His previous posts can be accessed here.
Thou Shalt not Register your Trade Union with a Name in the Likeness of My Trademark
By Bharathwaj Ramakrishnan
Recently, a Writ Petition (here) concerning registration of a trade union of the workers of Samsung India with the name “Samsung India Thozhilalar Sangham” (Thozhilalar Sangham means “Labour Union” in Tamil) has been under consideration before the Madras High Court. The Writ petition was filed by the trade union against the Registrar of Trade Union for not registering them under the Trade Union Act. Later, Samsung India Electronics Pvt Ltd, proprietor of the trademark “Samsung” filed an impleading petition seeking to be made a party to the proceedings. It argued that since the trade union had political ties, the company’s reputation would be affected if the trade union is allowed to use the company’s name. Note: Section 16 of the Trade Union Act allows a registered trade union to have a political fund which then can be used in “promotion of the civic and political interests of its members” thus it is clear that Trade Union Act envisions a political role for a registered trade union. As the case stands, Samsung India has been impleaded as a party to the Writ Petition (see PDF here) by the Madras HC. For additional context; it has to be stated that trademark infringement has been one of the ways in which companies have gone after unions, especially in the U.S. (see here and here) (more on this below). With this said, the present controversy raises a question of whether it would be trademark infringement under the Indian laws, if a trade union was to register itself with the company’s trademarked name in it. Likewise, it also makes one wonder whether the law permits companies to raise such opposition under the Trade Union Act by asserting their Trademarks.
Setting the Scene, Enter Trade Union Act:
For some additional background context, as reported, recently the workers of Samsung India were conducting a strike for their demands for a better pay and, most importantly, to register their trade union under the Trade Union Act. There have concerns raised on the impact this strike might have on the investment climate of the state (see here, here, here, here, here for Retd. Justice Chandru’s interview on this issue gives a more historical, political, approach to the issue).
The registration of trade unions is governed by the Trade Unions Act 1926, a pre-colonial legislation. Sections 5 to 8 of the Act are the most relevant for our analysis. Section 5 deals with the application for registration of a trade union wherein it states, it will include “the name of the trade union and the address of its head office”. Section 6 provides that relevant Rules will clarify certain particulars, including the requirement for specification of the name of the trade union. Section 7(2) which in my view is an important provision, mandates the Registrar to refuse registration of a trade union if the name is identical to an existing trade union, or in the Registrar’s opinion, deceivingly similar to an existing trade union. In such situations, the Registrar ‘shall’ require alteration of the name. Finally, Section 8 imposes a statutory duty on the Registrar to register the trade union if the requirements under the Act have been fulfilled. Likewise, it must also be noted that post-registration, the Trade Unions Act also imposes regulation on the manner in which the trade unions funds can be spent (Section 15) while also granting some immunity (Section 17,18).
Indian Courts on Trademarks and Trade Unions:
Cases involving trademarks and trade unions are few and far between (if the readers are aware of any other cases not discussed here that deal with this issue, please leave a comment. Yet, there are a few that might shed light on how courts have dealt with trade unions registrations in the context of Trademark Law. The Delhi H.C.’s decisions in Kedarnath vs J.K. Organisation (1997) (Hereinafter JK) and Food Corporation of India Workers Union vs Food Corporation of India (2014) (Hereinafter FCI) are illustrative and can shed some light on the issues at hand even though the factual situations in both these cases do not match up to the Samsung case. It is also important to note that the courts, in these cases, have emphasized the fact that trade union do not engage in any trade; and that a similar argument has been made in the current case.
In the J.K. case, the question was whether trade unions can oppose the registration of a Trademark. Here, a trade union registered with the name J.K. Organization had members using a trademark consisting of the letters ‘J.K.’ or the word ‘JAYKAY’ in their business. The trade union filed an opposition proceeding against the registration of the mark ‘JAYKAY’ by a company making locks. The Court concluded that since the word “Any person” is used under Section 21 of the Trademark Act, a trade union can oppose the registration of a mark. However, the Trade Union fell in the second argument that the petitioner advanced that the Trade Union in itself was not engaging in any course of trade, and it was pursuing the case on behalf of members who were selling goods and services under J.K and no member who was using the mark was party to the suit.. Yet in another part of the judgment (para. 21) the Court also read Section 2(h) of the Trade Union Act to state that the trade union will have locus standi for an opposition of a Trademark in the context of trade they are concerned with. Thus it is slightly unclear as to the position of law that is emanating from this case.
The FCI case, which is a case concerning Section 7 of the Trade Union Act, concerned two trade unions with similar names. Here, the Court observed in relation to IP and trade union registration that “In my opinion, the aforesaid judgment, in the context of intellectual property rights, would have no application to trade unions, which the counsel for the plaintiff Union also accepts do not have any trademark or right as the intellectual property right in an entity carrying on business. Rather, as aforesaid, the Trade Unions Act is a complete code in itself and thus the provisions thereof cannot be compared with the provisions of The Companies Act and/or the intellectual property rights of an entity carrying on business.”
The Court drew a distinction between companies registered under the Companies Act having common law rights in their trademarks or trade names and trade unions which lack the same rights in their name or marks as it does not engage in trade.
Trademark Battles between Trade Unions and Companies:
In the U.S, Trademark Act has been used by companies to go after the trade unions. Recently, Trader Joe’s and Medieval Times have sued their respected unions for trademark infringement (see one of the cases here for a summary discussion of both cases see here). The crucial distinction between these two cases and the present case at hand is that the unions were selling goodies like tote bags, cups, and buttons with the union logo. Even though both cases turned out in favour of the unions, it is also crucial to notice the fact that in the case of Samsung India Thozhilalar Sangham, it has not been alleged that they are selling or participating in the sale of any goods or services and post-registration the union would be constrained in the use of its general funds to the specific heads provided in Section 15 of the Trade Union Act. Furthermore, the definition of “trade union” under Section 2(h) would not allow the trade union to engage in any sale of goods and services.
Trade Union Registration and Samsung Opposition:
Coming back to the case, Samsung opposes the registration of the name, as it believes that it would be in violation of its trademark rights. As the arguing counsel for Samsung points out, he is not opposing the registration but merely the registration of the trade union with “Samsung” in it. As seen above, the Trade Union Act governs trade union registration, and registration is not done under the Trademark Act. Likewise, the Trade Union Act provides for the procedure for name change in the event the name “so nearly resembles such name as to be likely to deceive the public or the members of either Trade Union.” Yet it must be noted that this is in the context of such deception arising in reference to another trade union only (see here (PDF)). Likewise, it is also clear that trade unions are distinguished from regular businesses in their ability to conduct and engage in trade. Thus, this absence of engagement in trade by the trade union might prevent the application of the Trademark Act to the issue of trade union registration.
I wish to thank Swaraj and Praharsh for helping me refine and edit this post and for helping me organize my thoughts on this issue.