In a most recent and landmark judgment on the issue of "exhaustion principle" in Indian trademark law, a Division Bench
of the Delhi High Court has held that Indian trademark law follows an
“international exhaustion” regime.
The Bench comprising of Justices
Pradeep Nandrajog and Siddharth Mridul partially allowed the appeal
filed by Kapil Wadhwa and others (Appellants) against the judgment of
Single Judge Justice Manmohan Singh in Samsung Electronics Co. Ltd. & Anr. v. Kapil Wadhwa & Ors., wherein the Single Judge had held the
Appellants guilty of trademark infringement and had ruled that
trademark law prohibits the sale of imported genuine products without
the authorization of the registered proprietor in India.
The appeal was partially allowed by the
Division Bench, thereby setting aside the judgment dated February 17, 2012 insofar as
the Appellants had been restrained from importing printers, ink
cartridges/toners bearing the trade mark Samsung/SAMSUNG and selling the
same in India. However, the Appellants have still been
injuncted from meta-tagging their website to that of Samsung.
Way back in the single bench judgment of this case, Samsung
Electronics Co. and its Indian subsidiary Samsung India had initially
filed a suit claiming that the Appellants were selling genuine and
unaltered Samsung printers imported directly from foreign markets into
India without due authorization. The Single Judge had held that the
Appellants were guilty of trademark violation. It was against this
judgment, the Appellants had filed an appeal.
Samsung was reprsented by Pravin
Anand of Anand & Anand while the Kapil Wadhwa and others were
represented Saikrishna Rajagopal on instructions from Shwetasree
Majumdar of Fidus Law Chambers.
The Court observed that the single judge adopted an “erroneous approach” to conclude that unless
goods are imported into India by the consent of the registered
proprietor of a trade mark “the act of importation is not permitted”
as per sub Section 3 of Section 30 (of the Trademarks Act), which
provision provides for “acquisition by consent for the purposes of
import”. In the appeal, the Court recognized the the
principle of international exhaustion under the Trademarks Act, 1999 and
observed that the same was clear from the fact that the term ‘in any
geographical area’, in the Statement of Objects and Reasons to the Trade
Mark Bill 1999 “clearly envisaged that the legislative intent was
to recognize the principle of international exhaustion of rights to
control further sale of goods once they were put on the market by the
registered proprietor of the trade mark”.
