Originally published June 19, 2007
A prominent Indian court has recently addressed for the first time the issue of parallel imports of intellectual property (IP) under Indian law in favor of a non-Indian IP owner. The High Court of Delhi (an appellate court inferior only to the Supreme Court of India) has issued an injunction in favor of Samsung Electronics prohibiting the continued unauthorized importation and distribution by Indian businesses of ink cartridges and toners that Samsung had manufactured and sold in China, ruling that the importation violated Samsung’s trademark in India.
In reaching its decision, the High Court relied substantially on an article authored by Mayer, Brown, Rowe & Maw partner, Sonia Baldia, that had analyzed at length the parallel imports of IP-protected goods under Indian law.
The High Court’s decision has received attention in the Indian Bar and appears to affirm the trend of the Indian judiciary to recognize and protect the interests of foreign corporate IP owners in India. More specifically, the decision is a welcomed development for non-Indian owners of IP in India, as it provides a clear legal basis for contesting the importation of "grey market goods" or parallel imports from outside India, and a heightened level of comfort with respect to the ability of IP owners to maintain and enforce established distribution channels as well as legitimate differential pricing structures.
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, but the Delhi High Court reversed and granted the injunction. Noting the absence of prior legal precedent in India, and in support of its ruling in favor of Samsung, the court quoted at length from Ms. Baldia’s work, titled "Exhaustion and Parallel Imports in India," which analyzes the legal framework of Indian IP law, including an analysis of the impact of India’s Trade Marks Act of 1999 on parallel imports in India.
You can access a copy of the High Court’s decision here. Sonia Baldia’s article "Exhaustion and Parallel Imports in India" appeared in Parallel Imports in Asia published by Kluwer Law International, 2004. To obtain a copy of this article, please contact Sonia Baldia.
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