INTA wades into Samsung trademark battle in India
The International Trademark Association (INTA) has filed an application with the Supreme Court of India to intervene in a trademark case involving parallel imports of Samsung printers.
In October last year, the High Court of Delhi ruled that an Indian businessman should be allowed to continue buying Samsung printers from abroad and selling them in India.
Samsung appealed against the ruling on the grounds that its trademark was being infringed because products were being sold in another market without its permission.
It added that its printers sold in India were materially different from those sold elsewhere.
The case, Samsung Electronics Co. Ltd. v. Kapil Wadhwa & Ors, is due to be re-considered by the Indian Supreme Court.
However, INTA has waded into the battle with the filing of an amicus brief in what is thought to be the first time it has done so in an Indian court.
Purnima Singh, senior associate and head of the IP practice at Mulla & Mulla & Craigie Blunt & Caroe in Mumbai, said she expected the intervention would add, “substantial weight,” to the court’s decision.
"The law on parallel imports is not as fully developed in India as it is in other jurisdictions so the Supreme Court is likely to look at what has been said,” she said.
In a statement on its website, on August 15, INTA’s Asia-Pacific Subcommittee said it supported the contention that parallel imports should not be carried out “unless there is clear proof that the trademark owner has expressly consented to the sale and import of the goods.”
INTA adds that buying products in one jurisdiction cheaply and then reselling them in another, for less than the trademark owner’s price point, would cause “irreparable prejudice.”
Singh added: “INTA make a good case for what they refer to as national exhaustion of rights. The principle being that once a product has been sold under a trademark, the trademark owner’s rights to control that product is then exhausted. Whoever buys the product can do what they want including selling it forward.
“The question is if that should apply only nationally or internationally and important aspects to consider while answering that question is to recognise the established position in law that trademark use and reputation is territorial in nature."
