Intellectual Property Rights | Parallel Import | Trade Mark

Kapil Wadhwa v. Samsung Electronics

Kapil Wadhwa v. Samsung Electronics

2013 (53) PTC 112 (Del.) (DB)


Whether the Indian Trade Marks Act, 1999 embodies the International Exhaustion Principle or National Exhaustion principle when the Registered Proprietor of Trade Mark places the goods in the market under Registered Trade Mark.


Samsung (Korea) and it’s Indian subsidiary Samsung India filed a suit restraining infringement of Trade Mark Samsung against the Defendants who were importing printers from Korea bearing the mark Samsung and selling the same into Indian market. The printers the Defendant were selling were similar to the printers sold by the Plaintiffs in India. However, the said models which the Defendants were selling were not being sold by the Plaintiffs in India.


The matter came up for hearing and the Learned Single Judge of the Hon’ble High Court of Delhi held that India follows the principle of National Exhaustion and not of International Exhaustion of Rights. Thus, the Defendants were restrained from importing exporting and dealing in printers and their ink cartridges/toners bearing the trademark SAMSUNG.

The order of the Learned Single Judge was challenged by the Defendants in appeal before the Division bench of the Hon’ble High Court of Delhi at New Delhi. The Division bench overruled the order of the Learned Single Judge after a careful reading of Section 29 and 30 of the Trade Marks Act, 1999, more importantly Section 30(3) & Section 30(4), Statement of Objects and Reasons of the Trade Mark Bill, 1999, Report of the Rajya Sabha (Upper House of Bi-Cameral Legislature in India) Standing Committee in respect of Copyright Amendment Bill, 2010  and held that the term ‘the market’ contemplated by Section 30(3) of the Trade Marks Act, 1999 is the international market. Thus, legislation in India adopts the Principle of International Exhaustion of Rights.

As the question of law was answered by the Hon’ble Division Bench against Plaintiffs/Respondents, the counsels for Plaintiffs/Respondents submitted before the Court, that an ordinary customer, who is provided with the warranties and after sales service by the Defendant/ Appellant may form a bad impression of product of Plaintiffs/Respondents, which can lead to damage of reputation of Plaintiffs/ Respondents. The Division Bench while setting aside the order of the Learned Single Judge directed the Appellants/Defendants to prominently display in their showrooms that the products sold by them have been imported from abroad and that the Respondents/ Plaintiffs do not give any warranty qua the goods nor provide any after service and that the warranty and after sales service is provided by the appellants personally.

Author: Ankit Rastogi

Full text (Single Judge)

Full text (Division Bench)

Read Summary of Single Judge Bench here


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