Comparative view of parallel imports

Comparative View Of Parallel Imports From The Trade Marks Perspective

Intellectual Property Laws

Outline Of Research

Parallel Imports (PI), also called gray-market imports, are goods produced genuinely under protection of a trademark, patent, or copyright, placed into circulation in one market, and then imported into another market without the authorization of the local owner of the intellectual property right. The ability of a right-holder to exclude parallel imports legally from a particular market depends on the importing nation's treatment of exhaustion of intellectual property rights. Usually a regime of national exhaustion awards the right to prevent parallel imports, while one of international exhaustion makes such imports legal.

Advocates of strong intellectual property rights support a global policy of banning parallel imports, arguing on many grounds including that if such trade, for example of medicines is to be widely allowed it would reduce profits in the research-intensive pharmaceutical sector and ultimately slow down innovation of new drugs. Moreover, they say that parallel imports could make it difficult for health authorities in different countries to sustain differential price controls and regulatory regimes. However, on the other hand public-health authorities in many countries argue that it is important to be able to purchase life saving drugs from the cheapest sources possible, requiring an open regime of parallel imports for common well being. But whether or not such imports actually are always beneficially to all is a real question.

Often it happens that goods for example video game consoles made for France imported to UK are sold at cheaper prices whereby trade mark owner's ability to control the quality of the product are undermined. Not only does importer's alteration to the goods impair the quality of the product but it also results adversely affecting the brand image or goodwill as in most cases the parallel imported products come without any post sale service or warranty protection. Also, parallel importing may also weaken the trade mark owner's capacity to prevent the import of counterfeit goods given the fact that post importation it may become difficult to distinguish between legitimate and counterfeit goods.

Thus the dissertation that I am currently pursuing, intends to analyse parallel imports from the trademark perspective, comparing the EU and Indian position in the first part and then gradually compare India's position with other developing economies like China, Malaysia and Singapore in the Asian subcontinent. The dissertation will also highlight the pros and cons of parallel imports given the fact that its regulation has indeed become a critical issue in the current ever expanding global trading system. The particular focus of my dissertation lies in appreciating the policy and case law development of European Union and comparing it with a giant developing economy like India. The object of this dissertation is to formulate a regime that India can adopt in relation to parallel imports especially with respect to books, cosmetic, food products, electronic and pharmaceuticals.

Structure Of The Dissertation

  1. Introduction

  2. Understanding concept, economics and the role of parallel imports

  3. Comprehending parallel import from the trade mark perspective and undertaking a comparative study between the various jurisdictions namely, EU and India and the rest of Asia mainly China, Malaysia and Singapore

  4. Analysing how India is dealing with the issue of parallel imports and comparing it in the above mentioned jurisdictions with respect to

a) Books

b) Cosmetic & Fragrances

c) Food Products, Beverages & Drinks

d) Electronic goods

e) Software & computer peripherals

f) Pharmaceuticals & Drugs

  1. Conclusion

Mentioned herein below are a few of the resources that will be referred to, in due course of research. The list is an inclusive list and not exhaustive in nature.

Annotated Bibliography

  1. Kerly' Law of Trade Mark & Trade Names; David Kitchin, David Llewelyn, James Mellor, Richard Meade, Thomas Moody Stuart, David Keeling; London Sweet & Maxwell, 2005, 14th Edition; (Chapter 16 Principle of Exhaustion) It is a classic textbook of English and the European Union law laying down in detail the essential principles that govern Parallel Imports. Also it deals with the relevant case laws that the court applied in interpreting the IP law policy.

  2. Parallel Imports; Warwick A Rothnie; Sweet & Maxwell 1993; 1st Edition. The book is Warwicks's Ph.D thesis on Parallel Import. Thought the book is a little outdated and does not really cover the latest development with respect to the topic however it is well structured and helps understand the topic well.

  3. Intellectual Property Law; Lionel Bently, Brad Sherman; Oxford University Press; 3rd Edition; (Chapter 41 Trade Mark Defences) The book deals with the jurisprudential development prior to the passage of the Directive with respect to Art 30, 36 of Treaty of Rome.

  4. Trade Mark Law- A Practical Anatomy, Jeremy Phillips, Oxford University Press, 1st Edition; (Pg 274-306: Principle of exhaustion and Pg 542-556: Pharmaceutical Trademarks) The book highlights the relevant case laws, TM Directives and regulations. It also critically analyses the iniquities and anomalities of trademark law while dealing with the topic.

  5. Keith E. Maskus, Parallel Imports in Pharmaceuticals: Implications for Competition And Prices In Developing Country, Final Report to World Intellectual Property Organisation, Draft- April 2001.

  6. Parallel Imports in Asia - Exhaustion and Parallel Import in India; Sonia Baldia, 2004 Kluwer Law International;

Futher Sources (Included)

  1. Parallel Trade in Europe: Intellectual Property, competition and Regulatory Law (E.I.P.R. 2009, 31(12), 636-637)

  2. Parallel imports and trademarks - where are we? (E.I.P.R. 2006, 28(9), 474-479)

  3. For EEA exhaustion to apply, who has to prove the marketing of the trade marked goods in the EEA - the trade mark owner or the defendant? (E.I.P.R. 2004, 26(2), 81-84)

  4. Colgate-Palmolive v Markwell Finance - the carving knife sharpened (E.I.P.R. 1989, 11(12), 456-459)

  5. Exhausted and Gray, but Still Going Strong: A Comparative View of Parallel Imports from the Trademark Perspective,

  6. The regime of exhaustion and parallel imports in China: a study based on the newly amended Chinese laws and related cases (E.I.P.R. 2004, 26(3), 105-112)

Cases (Included)

  1. Colgate-Palmolive v Markwell Fin [1989] RPC 497

  2. 85 Revlon Inc. and Others v Cripps & Lee Ltd. and Others [1980] F.S.R. 85

  3. Zino Davidoff v. A & G Imports [1999] 3 All ER 711

  4. Samsung Electronics Company Ltd. & Anr. v.Mr. S.Sahani (New Delhi High Court- CS (OS) No. 1603 of 2006)

  5. Penguin Books Ltd.v. India Book Distributors and Ors. AIR 1985 Del 29