Trademark

INTAvening in the Supreme Court: Parallel Imports and the Samsung Saga


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).

Shamnad Basheer

Shamnad Basheer

Prof (Dr) Shamnad Basheer founded SpicyIP in 2005. He is currently the Honorary Research Chair of IP Law at Nirma University and a visiting professor of law at the National Law School (NLS), Bangalore. He is also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof Amartya Sen. Professional History: After graduating from the NLS, Bangalore Professor Basheer joinedAnand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Prof Basheer has published widely and his articles have won awards, including those instituted by ATRIP and the Stanford Technology Law Review. He is consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also serves on several government committees.

2 comments.

  1. AvatarAnonymous

    INTA is where big IP firms are part of jambooree conducted once a year and all big multinational companies are also part of the INTA as corporate member, as this case is also going to have bearing affect on the other multinational companies of US.

    This is a corporate strategy to support samsung in the court to support under the banner of INTA,
    as US company may also may have heat in future.

    So Multinational companies lawyer whose is going to represent INTA is not a PIL lawyer but a multinational company lawyer to support the MNC interest and is not going to join for the consumer cause or in the court.

    So Motto is you scratch my back I will scratch yours.

    I will company can not retain a right up to level of consumer home, once product sold he has recovered his all cost with profit, the company should do not have right stop further sale on the name of exhaustion rights.

    It means any product purchased in bulk from the whole sale store for further sale of product will be declared illegal.

    Reply
  2. AvatarMurari V.

    I am not a lawyer, but it seems there are parallels to the copyright exhaustion issue in “Kirtsaeng v. John Wiley & Sons” that the US Supreme Court recently ruled on. Does trademark exhaustion work differently?

    Reply

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