DR. P. SREE SUDHA, LL.

D
ASSOCIATE PROFESSOR
DSNLU

INTERNATIONAL TM
&
PARLELL IMPORTS
Trademark is Territorial law
 Trademark rights are territorial as the products identify the a
source of origin.
 Trademark laws are territorial as they are promulgated primarily
by national law making , whether judiciary or legislature.
 A trademark is acquired through national statutory provisions
 Thus, a manufacturer has to obtain separate registrations in
different countries for entitled to protection.
 Trademark rights are enforced on the basis of respective national
statutory provisions.
 This means that, irrespective of the trademark owner holding
rights in different countries, an action for infringement will lie so
far as it involves the vindication of the rights available in such
country .
Doctrine of Exhaustion of IP
Rights
 It is a concept in Intellectual property law whereby an
intellectual property owner will “lose” or "exhaust" certain
rights following the sale of that IP.
 Exhaustion occurs at the moment when the intellectual
property rights (IPR) holder’s control over the use and
disposition of goods and services embodying IPR ceases in
order to permit the free transfer of goods and services
within and across national borders. This generally occurs
when goods and services are first sold or placed on the
market.
 For example, the ability of a trademark owner to control
further sales of a product bearing its mark is generally
"exhausted".
 The rights of commercial exploitation for a given product
end with the product’s first sale.
Exhaustion of Intellectual Property
Rights, also known as "The First Sale
Doctrine"
 Basically the doctrine says whenever a good protected by patents,
copyrights, or trademarks is sold, then the owner of the goods has
realized the benefits of the protection. Those rights are "exhausted" at
the point of first sale.
 That "first purchaser" of the good is free to resell the good wherever he
wishes, even if he is competing against the original producer.
 he exhaustion doctrine doctrine has received the blessing of the
European Court of Justice (Merck v. Stephar, 1981) and the Supreme
Court of Japan.
 • The WTO rules, specifically the TRIPS accords, Article 6, permit the
"exhaustion doctrine."
 Countries make their own laws on whether to permit parallel imports--if
they do, they have ruled in favor of "Exhaustion" or "First Sale" doctrine.
Pharmaceutical firms object to the Exhaustion Doctrine (and Parallel
Imports), and lobby vigorously against both.
Example:

 Intellectual property Legal principle that, in

general, the first sale of a copyrighted,
patented, or trademarked good exhausts the
Copyright patent Trademark owners
intellectual property right (IPR) in that he or
she cannot control the distribution or resale
of the good. Therefore Therefore if 'A' (the IPR
owner) sells to 'B,' then 'B' can sell to 'C'
without the approval of 'A.' Also called
doctrine of first sale.
TRADEMARKS EXHAUSTION

 In trademark law, a trademark owner cannot

control further sales of a product bearing its
trademark after the first sale.
 Thus, a buyer can resell a product bearing the
trademark.
 Of course, course, the first sale must be an
authorized or unrestricted sale.
 If the first sale were to someone outside an
authorized territory, such as in the case of “gray
market” goods, then the trademark rights would
not be exhausted.
EXHAUSTIONS UNDER TM ACT
 Section 30(3) of the Indian Trademarks Act, 1999 which provides
that: Where the goods bearing a registered trade mark are
lawfully acquired by a person, the sale of the goods in the market
or otherwise dealing in those goods by that person or by a person
claiming under or through him is not infringement of a trade by
reason only of a)……………………
 b) the goods having been put on the market under the registered
trade mark by the proprietor or with his consent .
 The wording of Section 30 is wide enough to subsume both
national and international exhaustion principles.
 Section 30 (3) provides that the general legal proposition that
once certain goods bearing a registered trademark are lawfully
acquired by a person, the subsequent sale of the goods in the
market or otherwise dealing in those goods is not an
infringement.
TYPES OF EXHAUSTION OF
RIGHTS
There are three kinds of exhaustion of rights:
i) National exhaustion of rights: National exhaustion of rights
refers to one of the limits of intellectual property rights. Once a
product protected by an IP right has been marketed either by
manufacturer or by others with his consent, the IP rights of
commercial exploitation over this given product can no longer be
exercised by manufacture as they are exhausted.
 Any proper use of the goods after the first sale of the product
would not amount to infringement.
 The concept of national exhaustion does not allow the IP owner
to control the commercial exploitation of goods put on the
domestic market by the IP owner or with his consent.
 However, the IP owner (or his authorized licensee) could still
oppose the importation of original goods marketed abroad based
on the right of importation
TYPES OF EXHAUSTION OF
RIGHTS
ii)Regional exhaustion of rights: Regional exhaustion of
rights refers to the first sale of the IP protected product by
the IP owner or with his consent exhausts any IP rights over
these given products not only domestically, but within, the
whole region and parallel imports within the region can no
longer be opposed based on the IP right.
iii)International exhaustion of rights: Once a product is
exported in a market outside India and the further sale of
the same product there, would come under the purview of
International exhaustion of rights but at the same time if
the goods are purchased from the international market and
sent back to India for the purpose of selling them here
would not be allowed as per principle of parallel imports.
EXCEPTIONS PRINCIPLE OF
EXHAUSTION
 A parallel import is a practice whereby an unauthorized
third party exploits the doctrine of exhaustion and imports
goods which are less expensive in one country to be sold
parallel with more expensive goods which are either non
imported or imported from a source controlled by the
trademark owner.
 Parallel Parallel importation - refers to the import of goods
outside the distribution channels contractually negotiated
by the manufacturer. Because the manufacturer / IP owner
has no contractual connection with a parallel importer, the
distribution channels are not controlled by the
manufacturer/IP owner and hence he opposes such
importation in order to separate his market
NO WORLD CONSENSUS ON
EXHAUSTION OF RIGHTS
 There is currently no international treaty in the field
of trademarks dictating a standard of national or
international exhaustion. The Paris Convention does
not address the issue.
 The Agreement on Trade Related Aspects of
Intellectual Property (TRIPs) is deliberately neutral
on the subject. Article 6 of TRIPs states: For the
purposes of dispute settlement under this
Agreement...nothing in this Agreement shall be used
to address the issue of the exhaustion of intellectual
property rights.
 In general, it was found that most countries favor
some concept of national exhaustion.
EXHAUSTION AND PARALLEL IMPORTS

 A standard of national exhaustion appropriately

takes into account many brand protection concerns
that are not addressed under a standard of
international exhaustion.
 The prices at which products are sold can vary from
country to country for a great variety of legitimate
reasons, among them differences in regulatory
requirements, environmental standards, labor and
material costs, and government subsidies and taxes.
 Parallel importers exploit these conditions by buying
products in a market where they are relatively cheap
and selling them where the price is higher.
Parallel imports
 Parallel import means that patented or marked goods are
purchased in a foreign market and resold in the domestic market.
These are known as passive parallel imports.
 Parallel imports involve cross-border trade in a product without
the permission of the manufacturer or right holder in the
importing country.
 This type of trade generally occurs where there is a significant
difference in price, quality, quality, or availability of the subject
product in the second country.
 The Parallel import products are different from counterfeit or
pirate goods, since they are legally manufactured and sold in the
first country by the right holder, and in some countries their
importation is legal.
 Parallel imports are often referred to as grey product, and are
implicated in issues of international trade and IPR
APPROACH FOLLOWED BY DIFFERENT
COUNTRIES
 All countries allow parallel imports. However, little
uniformity exists in the overall approach.
 Article 6 of the General Agreement on Tariffs and Trade/the
Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS), of the World Trade Organization
(WTO) Agreement, provides that appropriate laws
regarding parallel imports should be drafted in such a way
that they do not violate the non-discrimination rules of the
most-favoured national and international treatments.
 ‘Nothing in this Agreement shall be used to address the
issue of the exhaustion of intellectual property rights.’
 It is therefore clear that the treatment of parallel imports is
subject to the national laws of different countries
 There are two prevailing theories regarding
exhaustion, namely, that once goods bearing a
trademark have been placed into commerce by, or
with the consent of, the trademark owner either:
(a) the owner cannot use his trademark rights to
prevent the further distribution of such goods
anywhere, the so called international exhaustion
rule; or
(b) he cannot use his trademark rights to prevent
further distribution of such goods in the same
country, country, but may prevent such distribution
in other countries, the so-called national exhaustion
rule.
THE UNITED STATES APPROACH
 The US adopted the universal rule (international exhaustion
through Section 526 of Tariff Act 1930 and Section 42 of Lanham
(Trademark) Act 1946, with respect to parallel imports). Under
these provisions, once a genuine trade marked product is placed
in the global market by, or with the consent of, the trade mark
owner, no infringement of the rights of the trade mark owner
occurs.
 Although there are a number of laws in the United States that
address the issue of parallel imports of trademarked products,
the treatment of parallel imports is fairly uniform. In an early
decision permitting the unauthorized importation and sale of
genuine bottled water from Europe, it was held that once a
trademarked product is placed on the market, trade mark rights
may not be used to control the product's further destination
Apollinaris Co. Ltd v. Scherer , 27 Fed
The European Union approach
 The European Union has adopted a regional exhaustion
rule that originally developed through decisional law on the
theory that the ability to prevent further distribution of
genuine goods would distort trade among the member
states.
 Thus the principle of exhaustion of rights was adopted with
respect to trademarks t, although this has been adopted a
only on a regional level; namely, only with respect to goods
first placed on the market within the Community, or
previously imported into the Community through a
member state.
 This regional exhaustion rule has been codified in the
harmonization directive ("Directive"), in accordance with
which the member states were required to conform their
national trademark laws.
The European Union approach
 Article 7 of the Directive provides that "the trade mark shall not
entitle the proprietor to prohibit its use in relation to goods which
have been put on the market in the Community under that
trademark by the proprietor or with his consent" except under
the provisions of Article 7(2), which exempts altered or damaged
goods. In addition, as a result of the Agreement on the European
Economic Area (EEA) between the EU and the European Free
Trade Association countries of Iceland I and Norway.
 However, the regional exhaustion rule does not imply
international exhaustion, where, for example, parallel imports
are in transit from one non-EEA member state, through an EEA
member state, to another non-EEA member state, and are seized
in the EEA member state as parallel imports voilative of the
trademark owner’s trademark rights in the member state.
The European Union approach
 The regional exhaustion rule does not imply international
exhaustion, as held by the European Court of Justice and
Silhouette International v. Hartlauer (Case C355/96)[1998]
ETMR 539, holding that Trademark Directive functioned as a
complete harmonization of the rules and, therefore, did not
permit the member states to adopt an international theory of
exhaustion, which would conflict with the EU’s regional theory of
exhaustion and cause barriers to the free movement of goods
and provision of services.
 It is interesting to note that the European Commission made
overtures in 2000 to introduce an international exhaustion theory
into Community law, by publishing a working paper on the issue.
However, after the working paper was laid open for debate and
consideration, the Commission withdrew from the debate by
deciding in June 2001 not to propose changes to the law
Commonwealth approach
 The United Kingdom applies the European Union law on
exhaustion with respect to goods first placed on the market
in an EEA country. Article 12 of the new United Kingdom
Trade Marks Act of 1994 has enlisted the language of the
Directive. However, a separate body of English
jurisprudence, developed under the former Trade Marks Act
1938 adopted an international exhaustion principle,
uninfluenced by the European Union law, and this body of
law, although arguably no longer applicable under the new
United Kingdom Trade Marks Act, serves as the model for
other British law countries in the Commonwealth.
 • As a result, the court decided that proprietorship of a
registered trade mark does not entitle the proprietor to
control the distribution of his branded goods after they
have left his hands.
Commonwealth Approach
 Thus, the Commonwealth position considers that a
trademark serves as an indication of the origin or source of
the goods, not as a "badge of control" which would allow
the trademark owner to control the trademarked goods
throughout their passage in commerce.
 Other British law countries have interpreted these passages
to provide no cause of action to trademark owners against
sellers of genuine goods on which a trademark has been
placed by the trademark owner or registered user.
 As Atari Inc. & Futuretronics Australia Pty. Ltd. v. Fairstar
Electronics Pty. Ltd. , (1984) 50 ALR 274 (action to stop
import of genuine goods for sale in Australia where first
plaintiff owned trademark and second plaintiff was sole
Australian distributor) adopted the Champagne theory of
exhaustion, denying interlocutory relief.
Commonwealth Approach

 See also R.A. & A. Bailey & Co Ltd v. Boccaccio

Pty Ltd. (1986) 6 I.P.R. 279 (S.C. of
N.S.W.)(parallel import of genuine BAILEY'S Irish
Creme did not infringe trademark since there
was no deception as to the origin of the goods.
 Smithers, J. articulated in the Atari /Fair star
case, the trade mark owner who releases goods
"on the billowing ocean of trade" will not be able
to use the trademark trademark to control the
ultimate destination of those goods.
Approach of Australia

 Both Australia's Trade Mark and Copyright Acts had

been amended to provide for a specific exemption to
infringement in this case in that the Act provided, for
example: "The copyright in a work a copy of which is,
or is on, or embodied in, a non-infringing accessory
to an article is not infringed by importing importing
the accessory accessory with the article" article". The
judge found that Ziliani's conduct came directly
under this provision and an exemption applied.
 The judgment is one of the first cases to deal with
1998 legislative amendments which were designed
to free up the ability of independent third parties to
"parallel import" products into Australia.
 • The judge appears to have effectively given teeth to the
amendments. In the decision of Polo/Lauren Company LP v
Ziliani Holdings Pty Ltd[2008] FCA 49, the Federal Court
has closed off the capability of trade mark owners to shut
down parallel importation of a genuine product using our
Copyright Act.
 • Ziliani purchased genuine out-of-season clothing bearing
Polo/Ralph Polo/Ralph Lauren's Lauren's polo player logo at
heavily heavily discounted prices in the US and imported
the clothing into Australia for retail sale. Polo/Ralph Lauren
attempted to shut down Ziliani's actions by arguing that
the importation amounted to an infringement of their
copyright in the polo player logo.
JAPAN AND KOREA
 Although many countries allow the war against parallel
imports to be fought by private parties in the courts or
before administrative tribunals, certain countries, such as
Japan and Korea, not only expressly permit parallel
imports, but also take affirmative steps to protect parallel
importers.
 However, under the current practice, if such acts fall under
"parallel "parallel import of genuine goods," goods," they
do not constitute trademark infringement, even if no
trademark license has been obtained from the trademark
owner. As an example, the general requirements of "parallel
import of genuine goods," as presented by the Supreme
Court in its decision
INDIAN APPROACH
 India has adopted the national exhaustion principle to
regulate parallel imports, the same being enshrined in
Section 30 of the Trade Marks Act 1999 (the 1999 Act). As
per this principle, if the goods are sold for the first time in a
domestic market or within the territory of the country in
which the trade mark is registered, the owner of that
particular trade mark loses their rights over the goods and
cannot prevent any subsequent sale of the same in the
domestic market of that country.
 Section 107 of the 1999 Act authorises representation of a
trade mark registered abroad to operate in India as long as
the same is sufficiently indicated in English.
Indian Approach
 • Subsection (1) of Section 29 of the Act prescribes that an
infringement action can be initiated against a person who, not
being a registered proprietor or a permitted user, uses the
registered trade mark or an identical or deceptively similar mark
in the course of trade. Moreover, clause (c) of subsection (6) of
Section 29 prescribes that import and export of goods under the
mark shall be treated as use of the mark for the purposes of
Section 29.
 Thus, when subsection (1) of Section 29 and clause (c) subsection
(6) of Section 29 are read together it becomes clear that if
anybody imports the goods who is not a registered proprietor
and acts without the proprietor's permission, then this action of
import would fall under "use" of the mark in the course of trade
and hence would lead to infringement of the right of the trade
mark proprietor.
Indian Approach
 From the provisions contained in the statute, it is clear that
the main objective behind Section 30(2) (c)(i) is to prevent
the owner of a trade mark from claiming infringement in
respect of a product against its use by another party to
whom the owner has expressly or implicitly granted
consent.
 A bare reading of Section 30(3)(b) reveals that where goods
bearing a registered trade mark are lawfully acquired, the
further sale or other dealings in such goods by the
purchaser or by a person claiming to represent the
purchaser is not considered an infringement, if the goods
have been put on the market under the mark by the
proprietor or with the proprietor's consent. Here the words
"by the proprietor or with his consent" are to be stressed;
the proprietor is the trade mark owner in India.
Indian Approach
 Hence this clause further reiterates that the consent of the
proprietor of trade mark in India is a must. Otherwise its use
(here, import for trade) would lead to infringement of the
trade mark. It may be pointed out that there can be no
infringement action if the goods are imported by the
importer for the importer's own use. In other words, the
statutory provisions contained in Sections 29 and 30 of
Trade Marks Act 1999 are applicable only in if the goods are
imported for trading purpose • In the landmark case of
Samsung Electronics Company & Anr v G Choudhary & Anr
the Delhi High Court held that under Section 30 of the Trade
Marks Act 1999 import of even genuine goods must be
made by or with the consent of the registered proprietor of
the trade mark in India.
List of Cases
1. Hindustan Lever Ltd. v. Briju Chhabra11[2000]
2. CISCO Technologies v Shrikanth12 [2005]
3. Samsung Electronics Company Ltd. & Anr. vs. G. Choudhary
and Anr.[2006]
4. Xerox Corporation v. Puneet Suri13[2006]
5. M/s General Electric Company v. Altamas Khan and Ors.
14[2008]
6. Louis Vuitton Mallettier v Abdul Salim and others15 [2006]
7. Wipro Cyprus Private Limited v. Zeetel Electronics16[2010]
8. Dell Case [March, 2012]
9. Samsung v. Kapil Wadhwa (Single Judge Bench)[February,
2012]
10. Kapil Wadhwa v. Samsung (Division Bench)[October, 2012]
Hindustan Lever Ltd. v. Briju Chhabra - Suit No.
2345 of 2000, High Court of Delhi

 the plaintiff HLL was the registered proprietor of the trade mark LUX and LUX
label in respect of toilet soaps within India. Unilever, PLC is the principal
company and registered proprietor of the trade mark LUX worldwide. The
defendant in this case imported into India LUX soaps manufactured in Indonesia
without any license, permission or authorization from HLL. The product so
imported also expressly indicated that the product was for sale in Indonesia only.
 HLL argued that such parallel import by defendant of LUX soaps from Indonesia
amounted to infringement of its statutory and common law rights on LUX in
India. It was also argued that the fact of such imported product being genuine
was of no relevance as any shortcomings in the grey goods would be attributed
to HLL. The plaintiff argued misrepresentation on the part of the defendant.
 It was also argued that if the territorial demarcation is not respected, HLL in
India would have to suffer huge losses by way of reduced sales of its goods.
 The Hon’ble High Court of Delhi agreed with the submissions of the plaintiff and
defendant was restrained from indulging in any further acts of parallel import.
CISACO Technologies v.
Shrikanth - 2005 (31) PTC
 In this case, plaintiff CISCO was selling its products used in
538 (Del)
computer hardware since the year 1984 under the
trademark 'CISCO' and was using a 'Bridge Device'. It was
submitted that the product of the plaintiff is used in critical
networks such as railways, air-traffic control, hospitals, air
defence, etc. and malfunctioning/failure of such products
would result in huge losses due to failure of these networks.
 The defendant in this case copied the product and the
trade name of the plaintiff in identical terms. Further, they
were also using the word 'CISCO SYSTEMS' on its products
with the 'Bridge Device'. The plaintiff invoked Section
29(6)(c) of the Trade Marks Act, 1999
CISACO Technologies v. Shrikanth - 2005
(31) PTC 538 (Del)
 Prima-facie case was made out for grant of ex-parte ad interim
relief. The defendants or any person acting under their authority
were restrained from marketing, selling, offering for sale,
importing, manufacturing or dealing with in any manner,
hardware components pertaining to computer or any
electrical/electronic goods bearing the trademark 'CISCO' and/or
using the 'Bridge Device' or any other trademark/mark
deceptively similar thereto.
 It was observed that Section 140 of the Trade Mark Act, 1999
makes statutory provisions where under the Collector of Customs
could prohibit the importation of goods if the import thereof
would infringe Section 29(vi)(c) of the Trade Marks Act.
 Statutory authorities must prohibit import of such products,
import whereof would result or abet in the violation of the
proprietary interest of a person in a trademark/trade name.
CISACO Technologies v. Shrikanth -
2005 (31) PTC 538 (Del)
 Therefore, directions were issued by the High
Court of Delhi to the Collector of Customs to
notify at all ports that no consignment, other
than that of the plaintiff, be permitted to be
imported in respect of routers, switches and
cards which bears the trade mark 'CISCO'
and/or the 'Bridge Device'. A local
Commissioner was also appointed to cease all
goods bearing the mark in issue and
inventory the same.
Samsung Electronics Company Ltd. & Anr. v. G.
Choudhary and Another -CS (Os) No. 1602 of 2006

 In the present case, Samsung initially brought suit in

the district court in Delhi seeking an injunction based
upon a claim of trademark infringement against the
unauthorized distributors from importing and
distributing Samsung’s products. The district court
denied the injunction. In appeal, the plaintiff prayed
for an interlocutory injunction which, in essence,
sought to combat and eradicate parallel importation
by third parties into India of products manufactured
by the plaintiff itself, but in China. The case set up
was that although the products were genuine, they
were not meant for Indian markets, inter alia
because their sale does not strictly conform to Indian
laws and regulations.
Relevant Provisions Cited –
TRIPS: Sec. 3, i.e. Provisional Measures Article 50(1)(a) “1. The
judicial authorities shall have the authority to order prompt
and effective provisional measures-
(a) to prevent an infringement of any intellectual property
right from occurring, and in particular to prevent the entry into
the channels of commerce in their jurisdiction of goods,
including imported goods immediately a
The Court held in this held that a prima facie case has been
made out for the issuance of ex parte ad interim injunction.
The balance of convenience was in favour of the plaintiff who
was likely to suffer irreparable loss and injury. The Court
observed that the goods and the evidence to substantiate the
complaints of the plaintiff would be removed if an injunction is
not granted forthwith.fter customs clearance;” Hence,
injunction was allowed.
Some of the key observations
have been cited below-
 “Indian law is quite liberal in permitting parallel imports of
genuine goods bearing registered trademarks, provided such
goods have not been materially altered after they have been put
on the market. ...once genuine goods are released into
commerce anywhere by or with the proprietor's consent, all
associated Indian trademark rights are exhausted. Such consent
may be express or implied, direct or indirect. The underlying
rationale for liberal exhaustion is that trademarks are deemed to
connote trade origin and not control. The trademark proprietor
may, however, impose contractual restrictions on a third party,
such as a foreign licensee, against importing genuine goods into
India, provided, that such restrictions pass muster under the
Trade Marks Act and the MRTP Act, Indian's competition statute.
Subsequently, if such genuine goods are imported into India, the
trade mark proprietor's remedy against the importer would be
through a claim for breach of contract and not for trade mark
infringement.”
Some of the key observations
have been cited below-
 The issue of exhaustion was not expressly addressed in the 1958
Act, but the New Act statutorily introduces this concept. Section
30 of the New Act provides that where the goods bearing a
registered trade mark are lawfully acquired, the further sale or
other dealings in such goods by the purchaser or by a person
claiming to represent him is not considered an infringement if
the goods have been put on the market under such mark by the
proprietor or with his consent....A cause of action for trademark
infringement may be available to the proprietor against an
importer where the genuine goods have been materially altered
without the proprietor's consent after they were put on the
market. The burden of proving such consent is on the importer. A
cause of action on the grounds of passing off is available if the
trademark proprietor can show that the importer is passing off
the goods in a misleading or improper way causing confusion in
the minds of the public.
Xerox Corpn. v. Puneet Suri -CS(OS) No.
2285a/2006; Unreported Order

 In this case, the plaintiff owned the trademark

‘Xerox’ and claimed that the defendant’s act of
importing and selling second hand Xerox machines
constituted trademark infringement. The defendants
argued that their acts were covered under Section
30(3), which recognized the principle of international
exhaustion.
 Justice Kaul of the Delhi High Court agreed with the
defendants and held that ‘import of [second hand]
Xerox machines that ha proper documentation is
permissible under the Trademarks Act, provided that
‘there is no change or impairment in the machine.’
M/s General Electric Company v. Altamas Khan and
Ors -CS(OS) No.1283/2006

 In the given case, the plaintiff, General Electric Co. filed a suit against the
defendants to restrain them from misrepresenting themselves as
authorized distributors of the plaintiff and from trading as GE
Dehumidifiers or in any other deceptively similar trading style and also
from importing, exporting, distributing, selling or dealing in
Dehumidifiers or any other product of the plaintiff under the trademark
GE or GENERAL ELECTRIC or the GE monogram or any other mark as
may be deceptively similar to the plaintiff’s trademark.
 It was the case of the plaintiff that the plaintiff for the reason of not
marketing Dehumidifiers in India was neither giving any warranty nor
any after sales service for the said Dehumidifiers in India and the illegal
sale thereof by the defendant caused loss of reputation to the plaintiff in
as much as the purchasers from the defendants on not being able to
claim on the warranty and get the after sales service were likely to think
ill of the plaintiff. The defendant had further tampered with the products
by erasing the serial and model numbers, which could have helped to
identify and track the origin of the products.
M/s General Electric Company v. Altamas
Khan and Ors -CS(OS) No.1283/2006

 Delhi High Court passed an interim injunction restraining

the defendant from dealing in General Electric (GE)
dehumidifiers without authorization from the plaintiff. It
also issues a permanent injunction against the defendants.
The use by the defendants of GE instead of Global
Electronics on their invoices clearly indicated that the
defendants thereby wanted to pass off their business and
their products as that of the plaintiff and intended to
confuse and deceive the customers and public at large.
Therefore, it was held that the defendants by using the said
monogram clearly infringed the trademark of the plaintiff
and sought to pass themselves off as the plaintiff. The
present case being an ex-parte matter, the Delhi High
Court, however, did not find it appropriate to deal with the
issue of parallel importation and trademark infringement
Louis Vuitton Mallettier v Abdul Salim
and others -5 CS(OS) 90/2006
 The factual matrix of this case was so that a suit was filed for protection
of rights in the trademark "Louis Vuitton", trademark/logo "LV" and the
"Toile monogram" design. The plaintiff as the registered proprietor of
the aforesaid marks/logo/monogram sought order against the
defendants from selling, offering for sale, advertising or dealing in hand
bags, wallets luggage, footwear, leather and imitation of leather and
goods bearing the aforesaid trademarks/logo/monogram. The cause of
action for the suit was the import by the said defendants of counterfeit
goods of the plaintiff bearing the aforesaid trademarks/logo/monogram.
Injunction was also claimed restraining the said defendants from
importing the aforesaid goods and passing off the same as plaintiff's
goods.
 The court ruled in this case pronounced a judgment in favour of the
plaintiff. The defendants No. 1 & 2 were proved to be illegally importing
counterfeit goods of the plaintiff and infringing the registered
trademarks/logo/monogram of the plaintiff. The defendants were held
not entitled to do so and the plaintiff, entitled to a decree for permanent
injunction.
Wipro Cyprus Private Limited v. Zeetel
Electronics - 2010(44)PTC307(Mad)

 The Appellant in this case filed a suit for

permanent injunction, restraining the
Respondents from using the trade mark
YARDLEY or any other phonetically similar
expression in any media which can infringe the
Applicant's registered Trade Mark. The applicant
alleged that the Respondent was passing off or
attempting to pass off or causing, enabling or
assisting others to pass off their talcum powder,
body spray and other cosmetic preparations as
and for the business and products of the
Applicant.
Wipro Cyprus Private Limited v. Zeetel
Electronics - 2010(44)PTC307(Mad)

 The Plaintiff had earlier purchased the registered trademark, namely

'Yardley' with all its variants from Lornamead Group Ltd., which had
got its trademark registered in India under the Trade Marks Act.
Consequently after such purchase, the Plaintiff filed an application
for getting the registration transferred in its name. Thus, the
Plaintiff, being the assignee of the said trade mark, had the right to
manufacture the said product in India and sell it using the said
trademark. While so, without any manner of right, the Defendant
tried to import the talcum powder and body spray having the
Plaintiffs’ trademark from Singapore.
Contentions:
Defendant:
 1. The goods tried to be brought into India are nothing but the original products
manufactured by the assignor of the Plaintiffs’ trade mark and in such a case, as
per Section 30(2)(c) of the Trade Marks Act, 1999 no action would lie as against
the Defendant. There is no embargo for importing genuine goods bearing the
trademark similar to that of the trademark of the Plaintiff and the Plaintiff
cannot claim monopoly over that trademark.
 2. The impugned goods have been imported from Singapore to India. The trader
in Singapore virtually obtained those goods only from U.K. manufactured by the
very assignor of the Plaintiff who still holds the trademark and manufactures
goods in U.K. and exporting countries like Singapore, Malaysia etc.
Plaintiff
1. Bu virtue of Sections 28 and 29 of the Trade Marks Act, 1999, once the assignee
(Plaintiff here) has got the assignment of the trademark from the original registered
owner the former has got exclusive right to use it in India. If the Defendant is
permitted to (parallel) import such product in violation of Clause (c) of Sub-section (6)
of Section 29 of the Act, then the very purpose of the assignment of the trademark
from the original owner would be rendered nugatory.
Issues:

a. Whether the Plaintiff has got the right to prevent

the Defendant from importing those goods and
trading in India;
b. Whether a case for passing off was made in the
present case. The Madras High Court in this case
held that the Defendant cannot import such goods
into India. The High Court distinguished the present
case from the Revlon Case as cited by the
defendant and noted that among the principal and
subsidiary companies, one cannot try to claim
monopoly right as against the other.
Findings:
 When the assignor of the trademark transferred the trade mark
in favour of the Plaintiff, the plaintiff acquired exclusive right to
use it. A plain reading of Section 28 of the Trade Marks Act, 1999
amply make the point clear that the Plaintiff being the assignor
of the trade mark is having the exclusive right of using it in India.
If Section 28 of the Act is interpreted in any other manner, that
would amount to rendering Sub-section (1) of Section 28
nugatory. Also, if the Defendant is allowed to import the goods
bearing the Plaintiffs registered trade mark, then it would
amount to violating Section 29(6)(c) of the Act.
 Harmonious construction of legislation is the bed rock of
interpretation of statutes. Sections 28 and 29 of the Act should
be read conjunctively and Section 30 of the Act has to be read
subject to Sections 28 and 29 of it. If Section 30 is read in
isolation, it would render the aforesaid Sections 28 and 29 otiose.
In fact, Section 30 should be treated as the proviso to Sections 28
and 29 of the Act.
Findings:

 Statute has to be interpreted keeping in view

their objects. The very object of getting once
trade mark registered is to have exclusivity and if
that exclusivity itself is taken away by any
dubious interpretation, it would render the entire
statute meaningless.
 However, the Court observed that since there is
no simulation or emulation of a registered trade
mark by another person, who want to
deceptively use the same, no case for passing-off
is made out.
Dell Case
 In this case, three Indian importers filed Bills of Entry for
import clearance of Dell laptops. These laptops were
imported into India from China. On examination of the
goods it was found that they were subject matter of an
alert which was issued in relation to the registration of
trade mark filed by Dell India Pvt. Ltd. under the
Intellectual Property Rights (Imported Goods) Enforcement
Rules, 200727. The matter was forwarded to Dell India for
getting their ‘No Objection’. The right holder (Dell India) did
not grant any authorization in respect of the said
consignments imported by the defendants and intimated
their willingness to join the proceedings. The plaintiff
submitted that the said consignments were prohibited
goods under Rule 6 of the said Rules read with Section 11 of
the Customs Act, 1962.
Dell Case
 The defendant made reference to Section 30(3) of the Trade
Marks Act, 1999 to state that the law in India relating to
import of branded goods is governed by the said section. It
was submitted that the exception carved out by the said
section protected lawful importers who imported branded
products which were lawfully acquired even if some other
person(s) was the exclusive distributor in respect of those
products. By quoting notes on clauses for Section 30(3)
which states that “sub-clause (3) and (4) recognize the
principle of “exhaustion of right” by preventing the trade
mark owner from prohibiting on the ground of trade mark
right, the marketing of goods in any geographical area,
once the goods under the registered trade mark are
lawfully acquired by a person.”
Dell Case
 Consequently, after hearing all the parties, the Customs
Commissioner passed an order in favour of the three
importers, based on interpretation of Section 30(3) (b) of
Trade Marks Act, 1999, which provided that where the
goods bearing a registered trademark are ‘lawfully
acquired’, further sale or other dealing in such goods by the
purchaser, or by a person claiming to represent him, is not
considered an infringement by reason of the goods having
been put on the market under the registered trademark by
the proprietor or with his consent. However, such goods
should not have been materially altered or impaired after
they were put in the market.
 Note: As in the Samsung case (discussed later), this matter
is likely to go into appeal and we can look forward to see
how courts interpret this section of the Trade Marks Act.