Parallel importation: INTA’s contribution towards a global approach

Parallel importation law, and the extent to which grey goods may infringe a registered trade mark, varies from country to country. In recent cases involving parallel importation before the Australian courts, focus has been the issue of “consent”. The meaning of consent is not yet settled in Australia and has been variously interpreted as tacit agreement through to active permission.

It is therefore interesting that the International Trade Mark Association (INTA) has filed an amicus brief with the Indian Supreme Court. As a “a friend of the court” INTA will provide information bearing on the topic, not as a party to the proceedings before the court, and not having been invited by the parties to assist the court. The amicus brief has been submitted in relation to an Appeal in the matter of Samsung Electronics Co Limited v Kapil Wadhwa & Ors. In October last year the High Court of Delhi determined that an Indian businessman was not infringing the SAMSUNG mark by parallel importing Samsung printers into India, notwithstanding Samsung claimed no consent had been given and that printers sold in India by Samsung were different to printers sold elsewhere. Samsung has appealed this decision and INTA’s contribution is to make a case on the issues of national and international exhaustion of rights and what constitutes consent.

INTA has a history of filing amicus briefs where it believes it has the opportunity to influence decisions so as to protect the interest of the public in the proper use of trade marks and to advance the development of trade mark law and unfair competition. It has filed amicus briefs in proceedings in Indonesia, Korea, South Africa and Russia, but is appears this is its first brief in India. It will be interesting to see how INTA’s advice is accepted, however in view of the global reach and membership of INTA, one expects its contribution will be seen as valuable by the Court and given due weight.