INTA, widely recognised as the most powerful IP association the world over has applied for leave to intervene in the famous parallel imports battle that is ongoing in India. A recent INTA bulletin states:
“The Asia-Pacific Subcommittee of INTA’s Amicus Committee has filed an amicus brief
with the Supreme Court of India seeking leave for INTA to intervene in a closely watched case on parallel imports and international trademark exhaustion. This is the first time the Association has sought to act as amicus in an Indian court.
In Samsung Electronics Co. Ltd. v. Kapil Wadhwa & Ors., the Supreme Court will consider whether the High Court of Delhi at New Delhi was correct in ruling that Kapil Wadhwa (Kapil) should be allowed to purchase Samsung printers from abroad and then import and sell them in India using the SAMSUNG trademark. Kapil argued that the doctrine of trademark exhaustion—which holds that a trademark owner’s right to control the goods bearing its mark becomes exhausted upon first sale of the goods—should apply. But Samsung countered that Kapil was infringing its trademarks because Kapil was reselling the products in another market without Samsung’s permission and because the printers sold by Samsung in India were materially different from those sold in other markets. The Appellate Bench of the High Court of Delhi ruled largely in Kapil’s favor. (Kapil Wadhwa & Ors. v. Samsung Electronics Co. Ltd. & Anr., FAO(OS) 93/2012 (Del. A.B. Sept. 7, 2012).) Samsung then appealed to the Supreme Court.
INTA’s brief supports the contention that the principle of exhaustion should apply only nationally with respect to parallel imports unless there is clear proof that the trademark owner has expressly consented to the sale and import of the goods in a foreign market.
The Association’s brief was written by Hemant Singh (Inttl Advocare, India) with feedback from the Amicus Committee—Asia-Pacific Subcommittee.“
For more background to this litigation and the Delhi high court ruling (including Justice Nandrajog’s creative metaphors on seas, ships and lighthouses) see my earlier post here:
Samsung is represented by Anand and Anand, one of India’s leading IP firms and Kapil Wadhwa is represented by another leading IP light, Shwetashree Majumdar of Fidus Law Chambers (who is briefing Shyam Diwan).