it is on parallel importing and case is kapil wadhava Ors vs Samsung Electronic Co.Ltd

1. INDORE INSTITUTE OF LAW
(Affiliated to D.A.V.V. & Bar Council of India)
{{
B.A.LLB. (HONS.)
Project Subject : IntellectualProperty Right
Project Topic : Kapil Wadhwa & Ors. vs Samsung
Electronics Co. Ltd
Submitted to : Asst. Prof. Dr.Mahasweta Sengupta
Submittedby: Avinash Rai
Date-:20/05/2016 Semester : VI

2. CERTIFICATE
This is to certify that I Avinash Rai has successfully
completed the project on the title “Trademark
referring to Horlicks, GlaxoSmithKline Consumer
Healthcare v. Compaln Heinz” for the partial fulfillment
of the DAVV norms under the supervision of Prof.
Dr.Mahasweta SenGupta at Indore Institute Of Law.
Faculty Signature :
Date:

3. ACKNOWLEDGEMENT
It is not possible to prepare a project report without the assistance and
encouragement of other people. This is certainly an exception. On the very outset
of this project I would like to extend our sincere and heartfelt obligation towards
all the personages who have helped me in this endeavor. Without their active
guidance, help, cooperation and encouragement, we would not have made headway
in the project.
I am thankful to Prof. Dr. Mahasweta Sengupta for conscientious guidance and
encouragement to accomplish this assignment. I extend my gratitude to INDORE
INSTITUTE OF LAW for giving me this opportunity. I also acknowledge with a
deep sense of reverence, my gratitude towards my friends and members of my
family who have always supported us morally as well as economically.
Thanking You
Avinash Rai

4. DECLARATION
I hereby declare that the project titled “Kapil Wadhava Ors Vs Samsung
Electronics Co.Ltd ” is my original work.
I take full responsibility for any kind of plagiarism.
Signature Of Student :

5. TABLE OF CONTENTS
S.NO. TOPIC
1.
2.
3.
4.
5.
6.
7.
8.
9.
10
11
List of Abbreviations
Table of cases
Abstract
Introduction
Background
Facts
Issues
Problems researched in this case
Judgment
Bibliography
Wibliography

6. INTRODUCTION
A trademark identifies the brand owner of a particular product or service. A license to
produce Smurf figurines the Lego Group purchased a license from Lucas film in order to
be allowed to launch Lego Star Wars TT Toys Toys is a manufacturer of licensed ride-on
replica cars for children. The unauthorized usage of trademarks by producing and
trading counterfeit consumer goods is known as brand piracy.
The owner of a trademark may pursue legal action against trademark infringement.
Most countries require formal registration of a trademark as a precondition for pursuing
this type of action. The United States, Canada and other countries also recognize
common law trademark rights, which means action can be taken to protect an
unregistered trademark if it is in use. Still, common law trademarks offer the holder in
general less legal protection than registered trademarks.
A trademark is anything that is used intended to be used to identify the goods of one
manufacturer from the goods of others. It is a brand name. Trademarks are important
business tools because they allow companies to establish their product's reputation
without having to worry that an inferior product will diminish their reputation or profit
by deceiving the consumer. Trademarks include words names, symbols and logos.
Anything that distinctly identifies your company can be a trademark, provided that it is
for goods.
A service mark is very similar to a trademark, except that it is used to distinguish
services in the stream of commerce. Like a trademark, a service mark can include words,
names, symbols and logos. Typically, trademarks appear on the actual product or its
packaging. Service marks appear mostly in advertising for the services. In this education
center, when we use the term trademark we generally mean both trademarks and
service marks.1 Trademark has a major value for any business, and one of the primary
concerns of any well established or successful business man. Therefore at the beginning
we must clarify what a Trademark is, its importance, and how the law protects its owner,
and the legal procedures to register a trademark.
UAE Trademarks law and Courts' judgments defines Trademark as any recognizable
mark that identifies products or services supplied through its producers or owner. Such
a mark can be a drawing, sign, shape or words...etc. Also, in some cases a voice or sound
can be recognized as a trademark for the product or service.
1 http://www.legalzoom.com/

7. Trademark is important because it helps businesses build and retain demand for their
products and services while enabling consumers to quickly identify and make a
purchase based on a recognized trademark.
Therefore, UAE has laws and regulations to regulate registration of a trademark and
protect it. Registration of a trademark must be stipulated by law in order to gain
protection; otherwise it will not be recognized .Trademark registration request has to be
submitted before UAE Ministry of Economy. As stipulated through UAE law such
requests can be submitted by an UAE citizen, or a foreigner, who is practicing
commercial, industrial, profession acts inside UAE, in addition to UAE public bodies.
However, a trademark shall not be registered if it is identical or similar to another
trademark used for similar of product or service. Nevertheless, as provided through
UAE law and courts, in case a trademark was removed from the Ministry's records a
third party may have a right to use it for its business or services. The Third Party must
file a request at the Ministry to use the trademark after three years from the date of
deletion.
If a registration request was rejected, it can be challenged within thirty days from the
date of rejection by the person or entity who submitted the request. Thereafter if that
grievance was rejected, the requesting party has the right to challenge that decision
before court within sixty days from the date he was notified with it.2
The term “parallel importation” refers to goods produced and sold legally, and
subsequently exported. In that sense, there is nothing “grey” about them, as the English
Patents Court. Grey and mysterious may only be the distribution channels by which
these goods find their way to the importing country. In the importing country, such
goods may create havoc particularly for entrepreneurs who sell the same goods,
obtained via different distribution channels and perhaps more expensively. In order to
exclude such unwelcome competition, intellectual property rights have sometimes been
of help. If products sold or imported by third parties fall within the scope of patents,
trademarks or copyrights valid in this particular country, such sale or importation by
third parties is generally deemed infringing. Owners of products covered by intellectual
property rights have the exclusive right to put such products on the market.3
http://www.mondaq.com
3 http://www.wipo.int

8. Background
The debate over parallel importation focuses on the extent to which a trademark owner
should be allowed to maintain control over its own brands by using its trademark rights
in a country or group of countries that can be defined "national" to restrict the
importation of goods into that country after the goods have been put on the market
somewhere else by the trademark owner or with its consent.
International Trademark Association has taken positions on the issue in the past, the
most recent being a resolution adopted by the Board on May 26, 1999 stating that the
Association favors national exhaustion of trademark rights in relation to the parallel
importation of goods. This position has on numerous occasions been communicated to
the European Commission and European Parliament in order to resist political pressure
to reverse the current EU regime of “community-wide” exhaustion in favor of
“international” exhaustion.
Throughout the world, trademarks serve to assist consumers in identifying the specific
product they are looking for and may have already purchased for years, and/or in
finding a branded product that is intended to deliver a certain level of quality, service
and consumer satisfaction, which is backed up by a reputable manufacturer and local
distributor and appropriate warranties. Safety issues may also play a role in a
consumer’s decision to acquire the respective product. Consumers around the world
have specific wishes and needs based on cultural, language, environmental and other
market conditions in their territory. Trademark owners design their products,
packaging, sales and distribution networks to meet such specific wishes and needs.

9. Abstract
The Plaintiff is stated to be a company incorporated under the laws of Korea and the
plaintiff is stated to be company incorporated under the Indian Companies Act. Kapil
Wadhav have a company incorporated under the Indian Companies Act. He are
purchasing from the foreign market printers manufactured and sold by him under the
Trade Mark SAMSUNG and after importing the same into India are selling the product
in the Indian market under the Trade Mark SAMSUNG and are thereby infringing the
registered Trade Mark of the respondents in India.

10. Trade Mark Act 1999
It shall come into force on such date1 as the Central Government may, by notification in
the Official Gazette, appoint Provided that different dates may be appointed for different
provisions of this Act, and any reference in any such provision to the commencement of
this Act shall be construed as a reference to the coming into force of that provision.
Definition of Trade Mark
Definitions and interpretation.—
(1) In this Act, unless the context otherwise requires,—
(a) “Appellate Board” means the Appellate Board established under section 83;
(b) “Assignment” means an assignment in writing by act of the parties concerned;
(c) “associated trade marks” means trade marks deemed to be, or required to be,
registered as associated trade marks under this Act.
(d) “Bench” means a Bench of the Appellate Board.
(e) ''certification trade mark” means a mark capable of distinguishing the goods or
services in connection with which it is used in the course of trade which are certified by
the proprietor of the mark in respect of origin, material, mode of manufacture of goods
or performance of services, quality, accuracy or other characteristics from goods or
services not so certified and register in respect of those goods or services in the name, as
proprietor of the certification trade mark, of that person
(f) “Chairman” means the Chairman of the Appellate Board
(j) “goods” means anything which is the subject of trade or manufacture
(k) “Judicial Member” means a Member of the Appellate Board appointed as such under
this Act, and includes the Chairman and the Vice-Chairman.
(l) “limitations” (with its grammatical variations) means any limitation of the exclusive
right to the use of a trade mark given by the registration of a person as proprietor
thereof, including limitations of that right as to mode or area of use within India or
outside India.

11. (m) “mark” includes a device, brand, heading, label, ticket, name, signature, word,
letter, numeral, shape of goods, packaging or combination of colors or any combination
thereof.
(n) “Member” means a Judicial Member or a Technical Member of the Appellate Board
and includes the Chairman and the Vice-Chairman.
(o) “name” includes any abbreviation of a name.
(p) “notify” means to notify in the Trade Mark Journal published by the Registrar.
(q) “package” includes any case, box, container, covering, folder, receptacle, vessel,
casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and
cork.
What is the Sec 29 in the Trade Mark Act 1999. Infringement of registered
trademarks—
(1) A registered trade mark is infringed by a person who, not being a registered
proprietor or a person using by way of permitted use, uses in the course of trade, a mark
which is identical with, or deceptively similar to, the trade mark in relation to goods or
services in respect of which the trade mark is registered and in such manner as to render
the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered
proprietor or a person using by way of permitted use, uses in the course of trade, a mark
which because of—
(a) its identity with the registered trade mark and the similarity of the goods or services
covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods
or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services
covered by such registered trade mark, is likely to cause confusion on the part of the
public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it
is likely to cause confusion on the part of the public.

12. (4) A registered trade mark is infringed by a person who, not being a registered
proprietor or a person using by way of permitted use, uses in the course of trade, a mark
which—
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the
trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without
due cause takes unfair advantage of or is detrimental to, the distinctive character or
repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade
mark, as his trade name or part of his trade name, or name of his business concern or
part of the name, of his business concern dealing in goods or services in respect of which
the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those
purposes under the registered trade mark, or offers or supplies services under the
registered trade mark;
(c) imports or exports goods under the mark
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade
mark to a material intended to be used for labeling or packaging goods, as a business
paper, or for advertising goods or services, provided such person, when he applied the
mark, knew or had reason to believe that the application of the mark was not duly
authorized by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such
advertising
(a) Takes unfair advantage of and is contrary to honest practices in industrial or
commercial matters

13. (b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include
words, the trade mark may be infringed by the spoken use of those words as well as by
their visual representation and reference in this section to the use of a mark shall be
construed accordingly.4
What is the Sec 30 . Limits on effect of registered trade mark.—
(1) Nothing in section 29 shall be construed as preventing the use of a registered trade
mark by any person for the purposes of identifying goods or services as those of the
proprietor provided the use.
(a) is in accordance with honest practices in industrial or commercial matters, and
(b) is not such as to take unfair advantage of or be detrimental to the distinctive
character or repute of the trade mark.
(2) A registered trade mark is not infringed where.
(a) the use in relation to goods or services indicates the kind, quality, quantity, intended
purpose, value, geographical origin, the time of production of goods or of rendering of
services or other characteristics of goods or services.
(b) a trade mark is registered subject to any conditions or limitations, the use of the
trade mark in any manner in relation to goods to be sold or otherwise traded in, in any
place, or in relation to goods to be exported to any market or in relation to services for
use or available or acceptance in any place or country outside India or in any other
circumstances, to which, having regard to those conditions or limitations, the
registration does not extend.
(c) the use by a person of a trade mark.
(i) in relation to goods connected in the course of trade with the proprietor or a
registered user of the trade mark if, as to those goods or a bulk or which they form part,
the registered proprietor or the registered user conforming to the permitted use has
applied the trade mark and has not subsequently removed or obliterated it, or has at any
time expressly or impliedly consented to the use of the trade mark.
4 indiankanoon.org

14. (ii) in relation to services to which the proprietor of such mark or of a registered user
conforming to the permitted use has applied the mark, where the purpose and effect of
the use of the mark is to indicate, in accordance with the fact, that those services have
been performed by the proprietor or a registered user of the mark.
(d) the use of a trade mark by a person in relation to goods adapted to form part of, or to
be accessory to, other goods or services in relation to which the trade mark has been
used without infringement of the right given by registration under this Act or might for
the time being be so used, if the use of the trade mark is reasonably necessary in order to
indicate that the goods or services are so adapted, and neither the purpose nor the effect
of the use of the trade mark is to indicate, otherwise than in accordance with the fact, a
connection in the course of trade between any person and the goods or services, as the
case may be.
(e) the use of a registered trade mark, being one of two or more trademarks registered
under this Act which are identical or nearly resemble each other, in exercise of the right
to the use of that trade mark given by registration under this Act.
(3) 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) the registered trade mark having been assigned by the registered proprietor to some
other person, after the acquisition of those goods; or
(b) the goods having been put on the market under the registered trade mark by the
proprietor or with his consent.
(4) Sub-section (3) shall not apply where there exists legitimate reasons for the
proprietor to oppose further dealings in the goods in particular, where the condition of
the goods, has been changed or impaired after they have been put

15. Legal perspective
Consumers ought to be protected against being confused or deceived into purchasing a
product which is not the product they intended to purchase. Confusion or deception can
arise in many ways, as described further below. Businesses ought to be protected against
the violation of their intellectual property rights, and in particular, from the potential
damage that parallel imports may cause to their trademark’s goodwill. Given the nature
of trademarks, it is apparent that goodwill can be built up differently in each country in
which the trademark is used. For this reason, it is inherently illogical to say that the
goodwill is “exhausted” in every country once the trademark has been used in just one
country.

16. Why are Parallel Imports a Problem
Parallel imports are problematic for both trademark owners and consumers for a
number of different reasons. For trademark owners, parallel imports often lead to an
inability to control the quality of their goods. Often products may be tailored to the
specific tastes and needs of a particular market. If goods intended for foreign consumers
are sold without authorization in another market, the trademark owner loses the ability
to ensure that consumers are receiving goods designed for their consumer preferences
and needs and potentially to satisfy governmental regulations. In addition, packaging,
manuals and instructions may be in a foreign language, and may lack domestic
telephone numbers and other contact details for customer support. In the case of
electronic goods, issues may arise with goods manufactured for use in countries with
different electrical standards. Products may emanate from a country with different
environmental protection laws or waste packaging laws, or may be formulated for
conditions that exist in some countries but not others, such as hard water or tropical
weather. Consumers who buy parallel imports may not be able to use or enjoy these
unauthorized products because of these differences, and may also be left without
recourse. Such differences are often material to the purchasing decision, and lead to
confusion over whether the products are authorized by the trademark owner. This
likelihood of confusion leads to disappointment and can have a real economic impact.
Both trademark owners and consumers may suffer financially as a result of parallel
imports. Consumers may find they have wasted money on differently formulated
products that do not meet their expectations based on their past experience with the
similar product formulated for sale where they live. Additionally, equipment produced
for other markets may not carry a valid manufacturer’s warranty in the jurisdiction
where it is purchased, and may not be serviced as readily as products manufactured for
that jurisdiction. Moreover, trademark owners may find their relationships and
contractual obligations for distribution of their goods in each jurisdiction to be harmed
by the sale of parallel imports, and the loss of sales by these distributors can impact on
future research and product innovation.

17. PARALLEL IMPORTING
Parallel Importing is a non-counterfeit product imported from another country without
the permission of the intellectual property owner. Parallel importing products is also
termed as grey-products. They are also authentic and genuine goods manufactured by
the trademark owner and then sold to authorized dealer. Now this authorized dealer
sells this product in market without knowing the purchaser that whether he is parallel
importer or someone else. It can be simply understand as taking advantage of lower
prices enterprising middleman buys stocks in the cheaper foreign country and imports
them into the dearer, domestic country. Hence, the imports may be described as being
imported in “parallel” to the authorized distribution network. This has basically started
from 1980's when the U.S. Dollar was strong and it was very expensive to buy cars in
U.S. The no. of cars were purchased by U.S. tourists through unauthorized channels.
There are essentially two reasons why parallel imports occur in international markets.
 Foreign manufacturers practice price discrimination among countries and grey
market sellers arbitrage these price differences.
 Parallel importers are more efficient than authorized sellers because parallel
imports compete with the goods of authorized sellers, in turn leading to lower
prices that are beneficial to consumers.
Parallel imports are imports of a patented or trademarked product from a country
where it is already marketed. According to the theory of exhaustion of intellectual
property rights, the exclusive right of the patent holder to import the protected
product is exhausted, and thus ends, when the product is first launched on the
market. When a state or group of states applies this principle of exhaustion of
intellectual property rights in a given territory, parallel importation is authorized to
all residents in the state in question. In a state that does not recognize this principle
however only the patent holder who has been registered has the right to import the
protected product.
Sometimes referred to as “grey market” imports, parallel imports often takes place
when there is differential pricing of the same product - either brand-name or generic
drugs - in different markets (usually owing to local manufacturing costs or market
conditions). The Trade-Related Aspects of Intellectual Property Rights (TRIPS)
agreement explicitly states that this practice cannot be challenged under the World
Trade Organization (WTO) dispute settlement system and so is effectively a matter of
national discretion.

18. Parallel imports can reduce the price of health products and pharmaceuticals by
introducing competition. However, they can also affect the negotiation of tiered
pricing regimes with pharmaceutical companies. If a private pharmaceutical
company agrees to sell a product at a lower price in poor countries, it will need some
assurance that the cheaper product will not be imported back into its rich country
markets, undercutting its profits.
When an importer finds a cheaper price of a good or equivalent good on the world
market the importer would import that good instead of paying higher local prices. These
imports tend to be outside authorized importer channels. Mostly such goods are carried
by ordinary tourists. Goods that do not incur heavy transportation costs are most at risk
from parallel imports. Authorized retailers, who are not allowed to source goods from
parallel importers, generally oppose this practice since it makes them non-competitive
against unauthorized retailers who can source these relatively cheap goods.5
Definition of Parallel Importing
When an importer finds a cheaper price of a good or equivalent good on
the world market and imports the good instead of paying higher local prices. These
imports tend to be outside authorized importer channels, and are often carried by
ordinary tourists. Goods that do not incur heavy transportation costs are most at
risk from parallel imports. Authorized retailers, who are not allowed to source goods
from parallel importers, generally oppose this practice since it makes them non-
competitive against unauthorized retailers who can source these relatively cheap goods
Earlier anytime any good has been brought from any country to India, the permission of
the Trademark holder has to be taken. So that requirement has been done with it in the
case :
5 uslegal.com

19. KAPIL WADHWA & ORS. ...Appellants
Represented by: Advocate Mr.Saikrishna Rajagopal
Advocate Ms.Shwetasree Majumdar.
versus
SAMSUNG ELECTRONICS CO. LTD. & ANR ...Respondents
Represented by: Advocate Mr.Pravin Anand
Advocate Mr.Nischal Anand.
CORAM
HON'BLE MR. JUSTICE PRADEEP NANDRAJOG
HON'BLE MR. JUSTICE SIDDHARTH MRIDUL
Judgment Reserved on : September 07, 2012
Judgment Pronounced on: October 03, 2012
Fact of this case
The Plaintiff no 1 is stated to be a company incorporated under the laws of Korea. The
plaintiff No. 2 is stated to be company incorporated under the Indian Companies Act.
In the field of the Trade Mark law which arises for consideration in the instant appeal
has an immense bearing on trade and commerce in India. The respondents Samsung
Electronics Company Ltd. and Samsung India Electronics Pvt. Ltd are companies
incorporated as per laws of Korea and India respectively the latter being a subsidiary of
the former. They are a part of Samsung Group of Companies having 14 listed companies
and 285 worldwide operations. The respondents manufacture and trade in electronic
goods such as color televisions, home appliances, washing machines, microwaves, air-
conditioners, computers, printer etc.
The business is done under the brand name corporate name using the Trade Mark
SAMSUNG In India the first respondent has licensed the use of the Trade Mark
SAMSUNG to the second respondent as per Trade Mark Agreement dated July 08, 2003
which has been filed for registration in the Trade Mark's Registry.

20. The grievance of the respondents is that the appellants are purchasing from the foreign
market printers manufactured and sold by respondent No.1 under the Trade Mark
SAMSUNG and after importing the same into India are selling the product in the Indian
market under the Trade Mark SAMSUNG and are thereby infringing the registered
Trade Mark of the respondents in India. Respondents allege that not only this
constitutes an infringement of their registered Trade Mark in India, but also allege
injury caused to the consumer in India who may be paying less for the printers in
question, but are misled to believe that they are purchasing an authorized Samsung
product in India sold with the permission of the respondents, in ignorance of the fact
that the printers imported and sold by the respondents are materially different to the
ones which are sold in the Indian market by the respondents. The respondents highlight
that their act of import and sale is beneficial to the Indian public evidenced by the fact
that the respondents are able to sell the product at prices less than 30% to 50% of the
compatible product sold by the appellants in India. The appellants bring home the point
that the respondents do not manufacture the printers in India. Even they import the
printers from abroad. To illustrate, a compatible product after importing in India is sold
by the appellants for `9,500 and the printer is sold by the respondents after importing
the same into India for `18,999. To which stand of the appellants, the respondents plead
that there is a difference in the features of the compatible products and highlight that
the injury caused to the Indian consumer, who may pay less for a compatible product, is
that the consumer buys the product of the appellant thinking that it is having the same
features as that of the product sold by the respondents. Trade Marks Act 1999 embodies
the International Exhaustion Principle or the National Exhaustion Principle when the
registered proprietor of a Trade Mark places the goods in the market under the
registered trade mark.
The port of destination reached by the learned Single Judge:
The Trade Marks Act 1999 embodies the National Exhaustion Principle. The lighthouses
seen by the learned Single Judge while chartering the voyage:
Section 29 and Section 30 of the Trade Marks Act 1999 fell for consideration and
interpretation. They read as under:-
The plaintiffs by showing the above acts of the defendants allege that the defendants are
guilty of the following infringement:

21.  By way of parallel imports, the defendants are infringing the trade mark SAMSUNG of
the plaintiffs in as much as the importation has been caused without the consent or
permission of the registered proprietor and thus the defendants acts are infringement in
view of Section 29 of the Trade Marks Act.
 By way of doing meta tagging and deep hyper linking, the defendants are guilty of the
infringement of trade mark SAMSUNG as the defendants are using the mark in relation
to the advertisement and the use of the same is treated to be use for the purposes of
infringement and thus the defendants are violating Section 29(1) read with Section
29 (6) of the Act.
 The defendants are passing off the goods which are not meant for Indian market giving
the impression that the same are emanating from the plaintiffs when the plaintiffs have
not given any such authorization or permission to the defendants to undertake such
activities. All this is being done to the detriment of the plaintiffs is clear act of
misrepresentation as well as deceit to the general public.
 The defendants are also tarnishing the reputation of the plaintiffs well known trade
mark SAMSUNG by providing the goods which are actually not intended to be served to
the Indian public. Any element of dissatisfaction would then clearly attack or reflect on
the reputation of the plaintiffs mark SAMSUNG.
The plaintiffs are guilty of concealment of material facts and have not come before this
court with clean hands. The defendants have been portrayed as infringers in the plaint
however the plaintiffs have not disclosed the following facts:
 The plaintiffs have suppressed a material fact that the applicants/ defendants are
importing and selling the genuine, original unaltered SAMSUNG printers which have
been purchased and imported through the legitimate channels. These printers have
been sold in the market by the plaintiff No. 1 and the same are being imported into India
and sold in the same condition as they were first sold by the plaintiff. All the relevant
import documents for each of the printers listed in the suit are being filed with these
present proceedings along with the import license issued to the defendant No.2 and
their central sales tax registration.
Plaintiffs have falsely claimed that they have received information that the defendants
were distributing, retailing and selling grey market printers of the plaintiffs in the
market in the month of the March 2011. The plaintiffs have deliberately chosen to

22. suppress the fact that the defendant No. 3 has been erstwhile brand shop which is
authorized retail outlet of the plaintiff No. 2 from the year 2000 to 2004, the only IT
brand ship of the plaintiff No. 2 in India at the time. Documents demonstrating the
commercial relationship between the plaintiff No. 2 and defendants No. 1 and 3 are filed
with the court.
It is submitted that even when the defendant No. 3 was the plaintiffs authorized outlet,
it was importing and selling openly on its premises, parallel imported products that
were not purchased from plaintiffs No. 2 or Indian distributors and the same were
stocked with the defendant No. 3 premises and the consumers had the option of buying
either of them. The only difference was price differentiation and warranty which is
emanated from Indian entity of the plaintiffs.
 The business model of the defendants of selling parallel imported product existed from
as far back as 1998 and was well known to the plaintiff No. 2 even at the time when the
agreement was entered into between the plaintiffs and the defendants and no objection
was raised during the currency of the relationship between the parties.
 The plaintiffs have not disclosed that the plaintiff No. 2 itself imports products from
other territories and sells them in India in the exact same manner as the defendants and
their averment in the plaint that there are separate earmarked products for India is
untrue.
 The plaintiffs have suppressed the relationship between the plaintiffs and the
defendants and there are some commercial relationships between the plaintiffs and the
defendants whereby the plaintiffs have failed to pay the rent to the defendants and the
present suit is a counter blast to the said grievance which is also pending before this
court in form of Dimension Next Infocom vs. Samsung India Electronics Ltd.
 The defendants have again attempted to falsify the statements in the plaint by urging
the model numbers of the printers stated in the plaint are not relating to the ones which
are earmarked for India and the said statement is untrue. It is stated that the products
are actually available in various countries including India and thus the said stand of the
plaintiff in the plaint is incorrect.

23.  The defendants have again stated that the investigator story mentioned in the plaint is
not properly worded and the defendants never stated that the printers which were asked
for are out of stock etc, the said story is misrepresented before this court.
 Plaintiffs are themselves guilty of defrauding the exchequer by selling the printers after
importation at the higher prices. The plaintiffs have also not shown to the court as to
how and why their own products are imported at the lower prices are shown to be at the
higher prices on paper.
The import of opening words "where the goods bearing registered trademark are
lawfully acquired by a person" is to be seen in the context in which they are used and
further reading of the said section along with other ingredients of the section would
make it clear that when the sub clause (a) speaks "the registered trade mark having been
assigned by the registered proprietor to some other person", then the same should
emanate from the registered proprietor within the same market or a person lawfully
represents to be proprietor within the market and not outside the same. This is due to
the reason that the section uses the wordings in sub clause (a) that the registered trade
mark having been assigned by the registered proprietor to some other person after the
acquisition of those goods. This presupposes that the registered proprietor at the time of
the assignment of the registered trade mark to some other person is aware of the lawful
acquisition of the goods by a person. Resultantly, all of the persons must coexist within
the same market and it cannot be said that the lawful acquisition takes place in
international market and assignment of the registered trade mark takes place in some
other market and thus the said provision may become inoperative or otiose and leads to
absurd results.
All this collectively and contextually means that if the goods are once acquired by a
person through a registered proprietor within the same market or may be as a
distributor of the registered proprietor within the same market, then the registered
proprietor or his assignee cannot turn around and state that is an infringement of his
trademark solely on the count that there is change of ownership by way of an
assignment between the registered proprietor and some other person and seek
prohibition on the dealings of the goods.

24. Infringement of registered trademarks:-
(1) A registered trade mark is infringed by a person who, not being a registered
proprietor or a person using by way of permitted use, uses in the course of trade, a mark
which is identical with, or deceptively similar to the trade mark in relation to goods or
services in respect of which the trade mark is registered and in such manner as to render
the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered
proprietor or a person using by way of permitted use, uses in the course of trade a mark
which because of--
(a) its identity with the registered trade mark and the similarity of the goods or services
covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods
or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services
covered by such registered trade mark, is likely to cause confusion on the part of the
public, or which is likely to have an association with the registered trade mark.
This judgment set out the message if they are trying to create market segmentation on
the basis of price because they want to book profits from the country which they are
importing and then they wanted to book double profits in India that is not going to
endorse and they cannot put Trademark Law as a vehicle to support that. Introduce
Uniform Pricing they will get rid of every parallel import from the market.
By this Court doesn't supports the market flooded with parallel imports at all. The Court
has laid very strict guidelines between legitimate and illegitimate imports. The
guidelines for parallel importing in India are:
 Obligation to ensure that importers not touching or altering the goods. Goods
shall be brought in the same structure as sold by the Trademark owner.
 Those goods should be supported by warranty.

25. Apart from this another problem raised out in an account of parallel importing is in the
field of e-commerce. With the increase in e-commerce business the scope of parallel
importing also widens. These goods are usually "genuine", but are supposed to be sold
in other countries.
Although till present, Chinese legislation is silent on the fact that whether selling goods
through parallel import and breach of contract constitute trademark infringement, the
majority of courts or enforcement authorities take a reserved attitude toward this issue
courts or enforcement authorities are careful to determine these acts constitute
infringement. Such attitude is reflected in a typical case, Victoria's Secret v. Shanghai
Jin Tian, trailed by the Shanghai Second Intermediate People's Court.
In the case of Victoria's Secret v. Shanghai Jin Tian, the defendant Jintian
Clothing advertised itself as the “sole designated distributor of US top underwear
clothing brand Victoria’s Secret” without Victoria’s Secret’s authorization and used the
latter’s registered trademarks in its sales promotion. In the judgment Shanghai Second
Intermediate People’s Court held that Jintian Clothing’s advertising itself as sole
designated distributor of US top underwear clothing brand Victoria’s Secret” constituted
unfair competition while the use of the plaintiff’s trademarks on hag tags, clothes
hangers, packaging bags and brochures are part of the sales activities therefore did not
infringe Victoria’s Secret’s exclusive right in its trademarks.
As in Australia Federal Court of Australia decision shows that parallel imported items
with valid trademark are subject to Section 123 of the Trade Mark Act. Hence Australian
legislation authorizes parallel importing except in the case of cars and books.
In the United States, legal precedent has established that parallel importation is legal.
In the case of Kirtsaeng v. John Wiley & Sons, Inc.,
In 2008, John Wiley & Sons, Inc. filed suit against Thailand native Supap Kirtsaeng
over the sale of foreign edition textbooks made outside of the United States marked for
sale exclusively abroad which Kirtsaeng imported into the United States. When
Kirtsaeng came to America in 1997 to study at Cornell University he discovered that

26. Wiley textbooks were considerably more expensive to buy in the United States than in
his home country. Kirtsaeng asked his relatives from Thailand to buy such books at
home and ship them to him to sell at a profit. He sold the imported books on bay
making $1.2 million in revenue although both sides dispute how much profit was
actually made.

27. Judgment
In 2013 the U.S. Supreme Court reversed the Second Circuit and held that Kirtsaeng
sale of lawfully made copies purchased overseas was protected by the first sale doctrine.
The Court held that the first sale doctrine applies to goods manufactured outside of the
United States and the protections and exceptions offered by the Copyright Act to works
lawfully made under this title is not limited by geography. Rather it applies to all copies
legally made anywhere, not just in the United States in accordance with U.S. copyright
law.
the US Supreme Court held that the first sale doctrine applies to copies of a copyrighted
work lawfully made abroad, thus permitting importation and resale of many product
categories.
Moreover, Science, State, Justice, and Commerce, and Related Agencies, Appropriations
Act of 2006 prohibits future FTAs from categorically disallowing the parallel import of
patented products.
As a result it will exert pressure on dealers and importers to sharpen their pencils and
cut down the prices. This will eventually come in the bags of consumers and help them
to find better price tags.

28. CONCLUSION
Parallel importers should not be permitted to mislead or confuse consumers and
undermine their expectations with respect to the quality and suitability of the products
they purchase. In no way is such confusion in the public interest. There is currently no
international treaty or consensus dictating a standard of national exhaustion or
international exhaustion. Most countries appear to favor international exhaustion. For
the reasons discussed herein, INTA advocates the adoption of national exhaustion,
which provides clear benefits to consumers as well as protection for the investments
made by trademark owners and their distributors in each jurisdiction. INTA recognizes
that there is amongst the public generally, and in many governments and legislatures, a
negative attitude towards the principle of national exhaustion, in the largely mistaken
belief that parallel imports are of significant benefit to consumers. In this Position Paper
International Trade Mark Association hopes to have dispelled this misconception and
point out that the principle of national exhaustion brings significantly more benefits to
consumers, trademark owners and local distributors, as well as continued, marketing
investments and trade throughout the world.

29. BIBLOGRAPHY
K.P CHAKRAVRTY
Dr . V.L.Wadhera

30. CASES REFERED
CASE S
Kirlaseng Vs JohnWilley and Sons, Inc
Victoria's Vs Shanghai JinTin
Next Infocom Vs Samsung India Electronic Ltd

31. WEBLIOGRAPHY
Indiankanoon
uslegal.com
www.mondaq.com
www.wipo.int