Samsung at the Supreme Court: Nationalising Exhaustion?

As expected, Samsung appealed the Delhi High Court order endorsing the concept of "international exhaustion" (parallel imports) under the Indian Trademarks Act. For those not in the know, we've outlined the concept of exhaustion and contrasted "international" with "national" exhaustion in this article here.

For ease of convenience, let me illustrate this with an example.

Assume that Apple Inc owns the trademark "iPhone" in the US, EU, India and several other jurisdictions including Bangladesh. An India retailer figures out that the iPhone sells cheaper in Bangladesh than in India. He imports the phones from Bangladesh into India and begins selling it here. Apple sues him, alleging that his sales within India amount to an infringement of their trademark (despite the fact that he is essentially selling Apple's very same iPhones, without alteration of any sort). The reason Apple does this is to ensure complete control of its markets and to preserve its exclusive licensing relationship with partners in India, Bangladesh etc. 

If the law in question recognises the doctrine of international exhaustion or parallel imports, Apple will not be able to prevent the Indian imports and sales, since it had already sold the "iPhones" that are now in circulation.

However, if the law disregards the notion of international exhaustion (and recognises only national exhaustion), then Apple could prevent the said imports.  Such disregard however flies in the face of "free trade" and often works to the detriment of consumers who might have otherwise been able to access cheaper versions of perfectly legitimate branded good.

From a purely jurisprudential perspective, the law leans in favour of international exhaustion (also referred to as the "first sale" doctrine) and has traditionally been very averse to any control over goods that had been purchased legitimately, a view best expressed in an 1886 copyright case (Henry Bill vs Smythe).

Besides, the very essence of trademark law is to guard against customer confusion of any sort. An iPhone by Apple is an iPhone by Apple..is an iPhone by Apple...no matter how many times it changes hands! Permitting circulation of legitimately purchased trademarked goods across borders does not in any way run counter to this basic underlying rationale of trademark law. If at all anything, it supports it!

However, given the present dynamics involving international trade and market power, it is not surprising that leading corporations hope to liquidate the concept of international exhaustion and convert it to a rather etiolated "national exhaustion" doctrine, wherein a branded good can change any number of hands within the territory of a nation, but the moment it is imported or exported, permission from the brand owner has to necessarily be procured. 

Back to the facts underlying the Samsung appeal:

The Times of India reports thus:

"The Supreme Court has issued notices on a complaint filed by South Korea's Samsung Electronics against the sale of imported Samsung-branded products without its authorisation, an issue which has major implications for trade and business in the country.

..Samsung was represented by senior counsel T R Andhyarujina, while Shyam Divan

appeared on behalf of local traders who were importing and selling printers bearing the Samsung trademark without the company permission. A three-judge bench, led by Chief Justice Altamas Kabir, issued the notices which will have to replied to within four weeks. 

Samsung had earlier sought an order from a lower court seeking an injunction restraining the traders from infringing and diluting its trademarks, but failed. The Delhi High Court had on October 3, 2012, ruled that local traders can import goods bearing a registered trademark into India and sell it further without any authorisation from the registered proprietor. It held that such sales were legal under the Trade Marks Act, 1999. 

But the company claimed that the HC had ....wrongly applied the principle of international exhaustion to the Indian market."

Delhi High Court: Division Bench vs Single Judge

Given that I am a strong supporter of international exhaustion and have had several heated debates and writings on this front, I really hope the Supremes uphold the order of the Delhi High Court.

In this order, the high court (bench comprising of Justices Pradeep Nandrajog and Siddharth Mridul) effectively reversed the decision of a single judge who'd held that the Indian trademark act recognised only  "national" and not "international" exhaustion. 

A large part of the interpretative dispute turned on whether or not the Statements of Objects and Reasons underlying the Trademarks Act could be used as an aid to interpretation. This Statement, which made it clear that our legislature (while introducing section 30 (3) and (4) of the present trademarks act) was keen on "international exhaustion" reads thus:

“Sub-clauses (3) and (4) recognize the principle of ‘exhaustion of rights’ by preventing the trade mark owner from prohibiting on ground of trade mark rights, the marketing of goods in any geographical area, once the goods under the registered trade mark are lawfully acquired by a person."

While the single judge refused to consider these aids in view of the fact that the statute admitted of a very plain and simple direct reading, the appellate bench (speaking essentially through Justice Nandrajog) disagreed, holding instead that the Statement of Objects and Reasons was a very important "aid" and could be read in to resolve any ambiguity in interpretation. The appellate bench tellingly notes:

  

"We have noted herein above that the learned Single Judge, though has opined that his conclusion is based on a plain reading of the statute, but actually is the result of a laborious decision which spans 156 pages. Surely, it would be a contradiction in terms to write 156 pages on a subject of interpretation of a statute and simultaneously maintain that a plain reading of the statute is being done."

In what is now coming to be a pattern of sorts, Justice Nandrajog intersperses his astute legal analysis with a litany of literary outpourings, likening the legal dispute to a maritime voyage filled with ships, lighthouses and what not. He introduces the dispute thus:

"While chartering the voyage the learned Single Judge has steered the ship in the choppy waters guided by what he saw to be lighthouses. Since we are re- navigating the same waters, our job in appeal would be to see : Whether what were perceived to be lighthouses were actually mirages, and due to which, on the wrong belief that these were rocky areas, the course of the ship was steered in a wrong direction to reach a wrong port of destination." 

As this "international exhaustion" laden legal vessel enters the choppy waters of the Supreme Court, one can only hope that it does not go down like the Titanic. But that the Supremes uphold the fine legal reasoning of the Delhi High Court and dock it on firmer legal shores.  

Copyright and Patents: International Exhaustion Under Attack?

All in all, the principle of international exhaustion is coming under serious attack in India. It made headlines in 2011 when the government executed a stunning volte face and hurriedly removed an amendment to section 2(m) of the copyright bill that would have recognised international exhaustion and legalised parallel imports in India. This was particularly surprising, given that the said amendment was initially proposed by the very same government and had found strong support in a Parliamentary committee report reviewing the bill. 

Upon strong opposition in Parliament, the government promised to refer the issue to a committee. And refer it did to a committee under the chairmanship of noted economist, Prof Rajesh Chadha of the National Council for Applied Economic Research (NCAER).

The Chadha committee held a series of consultations and meetings with a number of stakeholders and is expected to issue its report shortly.

A little after the copyright volte face above, the notion that our patents act endorsed the doctrine of international exhaustion was questioned by Sai Deepak, in a pubic interest litigation (PIL) filed before the Delhi High Court. Unfortunately, the court ducked the issue, holding that the petitioner lacked standing (locus standi) to file the PIL. 

Assuming the patents act does endorse international exhaustion (and I strongly believe it does), does section 107A restrict itself to an exhaustion principle or does it go beyond? 

I'd ruminated extensively on this issue (along with Mrinalini Kochupillai, an ex blogger at SpicyIP and dear friend who now does stellar work around plant variety protection at the Max Planck), in this paper here, offering suggestions on how one might interpret this provision to ensure compliance with that behemoth of an international instrument called TRIPS.

As we debate this issue in India, its interesting to note that the US Supremes are also ruminating over whether or not to endorse international exhaustion.
 
Certainly, interesting (and dare I say, exhausting) times ahead for many of us, as we struggle to stave off attempts to "nationalise" international exhaustion!

Read More

Breaking News: Delhi High Court recognizes international exhaustion under the Indian trademark law

In a landmark decision, the Division Bench of the Delhi High Court yesterday recognized the principle of international exhaustion under the Trade Marks Act, 1999. The Bench comprising of Justice Pradeep Nandrajog and Justice Siddharth Mridul partially allowed an appeal filed by Kapil Wadhwa (Appellant) against the order of the Single Bench in Samsung Electronics Co. Ltd. & Anr. v. Kapil Wadhwa & Ors [C.S. (OS) No. 1155/2011] dated February 17, 2012. The Appellants were represented by Sai Krishna and instructed by Shwetashree Majumdar of Fidus Law Chambers and Mr. Pravin Anand appeared for the Respondents. 

By way of a quick recap, Samsung Electronics Co. Ltd. and its Indian subsidiary (Respondents) sued the Appellant, previously an authorized dealer of the Respondent, for unauthorized sale of Samsung printers imported from foreign markets into India. The printers sold by the Appellant to were cheaper in comparison to similar products sold by the Respondent. Furthermore, the Appellants were slapped with allegations of meta-tagging and deep hyperlinking with Respondents website for the sale of imported printers. Justice Manmohan Singh held the Appellants guilty of trademark infringement and also ruled that: 

(a) Section 29(1) read with 29(6) prohibits the sale of imported genuine products without the authorization of the registered proprietor in India; &

(b) Section 30(3) embodies only National Exhaustion principles and does not extend to products acquired from a foreign market.

For a detailed analysis of the decision of the Single Judge, read Arun Mohan’s guest post here. 

Findings of the Division Bench 

In determining the sole issue raised in the appeal that whether the Indian Trade Marks Act, 1999 embodies national exhaustion or international exhaustion principles, the Division Bench found the following: 

I. Section 29: The Bench upheld the Single Judge’s view that the sale of imported products without the consent of the registered proprietor constituted ‘use of the mark’ as per Section 29(1) read with Section 29(6). Pertinently, the Bench pointed at Section 29(6)(c) which makes explicit reference to import of goods under the mark. The Bench, however, opined that it was ‘premature’ for the Single Judge to have inferred that the legislative intent of Section 29 imposed barriers on importation without any discussion on Section 30.  

II. Section 30(3): The crux of the dispute hinged upon whether Section 30(3) permitted sale of imported products without the consent of the registered proprietor? For the sake of convenience, Section 30(3) is reproduced below: 

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. 

The Division Bench disagreed with the interpretation of the Single Judge for the following reasons: 

Firstly, the Single Judge erroneously concluded that the expression ‘lawfully acquired’ in Section 30(3) meant ‘acquisition by consent for the purposes of import’. The Division Bench adduced the incorrect interpretation to a question posed initially by the Judge, viz. whether the provision confers rights to users or merely provides a defense to infringement? The Bench opined that conclusion of the Single Judge that Section 30(3) conferred no additional rights on users led to this incorrect view. 

Secondly, the Bench saw no merit in the Single Judge’s interpretation that permitting imports based on sub-section (b) and ignoring sub-section (a) will entail absurdity. The Bench held that ‘the two situations are distinct and operate in mutually exclusive areas and the question of any one being interpreted in a manner to render the other otiose does not arise.’ 

Thirdly, the Bench identified a ‘patent fallacy’ in the Single Judge’s view that the scope of the expression ‘the market’ in Section 30(3) is limited to domestic markets and therefore import of products requires the consent of the registered proprietor. In pertinent part, the Bench observed that: 

There is no law which stipulates that goods sold under a trade mark can be lawfully acquired only in the country where the trade mark is registered. In fact, the legal position is to the contrary. Lawful acquisition of goods would mean the lawful acquisition thereof as per the laws of that country pertaining to sale and purchase of goods. Trade Mark Law is not to regulate the sale and purchase of goods. It is to control the use of registered trademarks. 

Fourthly, reliance placed on the trademark legislations in EU, UK, Australia, Brazil, Turkey, Singapore and Hong Kong by the Single Judge to ascertain the scope of the word ‘market’ was of no avail. The Division Bench stated that the statutes abroad clearly indicate whether international exhaustion applies or otherwise. Therefore, these provisions are no assistance to clear the ambiguity in the existing Indian provisions. In this regard, the Bench observed that: 

Thus the neutral expression ‘the market’ without the legislature adding words to indicate whether it was the domestic or the international market which was in the mind of the legislature does not justify the conclusion arrived at by the learned Single Judge as the only logical conclusion. 

Lastly, the Bench deciphered the legislative intent to have recognized the applicability of international exhaustion based on textual interpretation and use of external aids. In ascertaining the textual meaning, the Bench observed that the presence of definitive article before ‘market’ in sections 29(6)(b) and 30(3), 30(3)(b) and 30(4) indicated that the expression is not used to specify a particular market but is used only to demarcate an economic area or space as distinguished from other spaces, whether private or public. On the other hand, the Statement of Objects and Reasons of the Trade Mark Bill 1999, India’s communications at the Uruguay Rounds and report of the Standing Committee on the Copyright (Amendment) Bill, 2010 overwhelmingly suggest India’s support for international exhaustion principles. 

III. Section 30(4): The Bench found merit in the argument of the Respondent that deficiency in services by the Appellant might prejudice the former’s reputation. This concern, however, was not sufficient to oppose further dealing of the work and instead the Bench directed the Appellant to issue an appropriate disclaimer. 

Order of the Bench 

The Division Bench partially set aside the order of the Single Judge to the extent that Appellants were earlier restrained from importing and selling Respondents products in India. Further, the order directed the Appellant to prominently display in their showrooms that the products sold were imported and that the Respondents do not provide any warranty or after sale services over such products. The injunction on the website, however, still continues.

Read More