Debranding and refurbishing end-of-life goods does not constitute trademark infringement or reverse passing off.

The Appellants (Western Digital and Seagate) manufacture Hard Disk Drives (HDDs) sold to Original Equipment Manufacturers (OEMs) abroad.

Once these HDDs reach "end-of-life" (warranty expiry), they are extracted from discarded equipment and imported into India.

The Respondents (refurbishers) purchase these imported HDDs, erase the Appellants' software, remove the Appellants’ registered trademarks, and affix their own brand names, new serial numbers, and model numbers before reselling them with their own warranties.

The Appellants sued for trademark infringement, passing off, and "reverse passing off," seeking to restrain these activities.

A learned Single Judge permitted the Respondents to sell refurbished HDDs subject to strict packaging disclosures.

The Appellants challenged this interlocutory order via appeal.

1. Whether the act of de-branding and re-branding refurbished goods constitutes "reverse passing off" under Indian law.

2. Whether the removal of an original trademark and subsequent sale constitutes trademark infringement under Section 29, and whether the protections of Section 30(3) and 30(4) of the Trade Marks Act, 1999 apply.

3. Whether the principle of international exhaustion applies to "end-of-life" goods imported for refurbishment.

The court primarily interpreted Section 29 of the Trade Marks Act, 1999, which defines infringement as the unauthorized "use" of a registered mark in the course of trade.

It applied Section 30(3), which codifies the principle of exhaustion (further dealings in lawfully acquired goods bearing a trademark do not constitute infringement).

and Section 30(4), which allows a proprietor to oppose such dealings if the goods are "changed or impaired".

The court relied on Section 27(2) regarding the common law remedy of passing off.

and invoked the principle of noscitur a sociis to interpret the word "changed" in Section 30(4) as being restricted to negative changes similar to "impaired".

It further followed the Division Bench precedent in Kapil Wadhwa v. Samsung Electronics Co. regarding international exhaustion and the "whole truth" disclosure principle.

The Court reasoned that Section 29 remains the exhaustive code for infringement; since the Respondents remove the Appellants' marks before sale, they do not "use" the mark in trade, thus no infringement occurs under Section 29.

Consequently, Section 30(3) and (4)—which are "limits" on infringement—do not strictly call for invocation, though the Court analyzed them arguendo.

On Section 30(4), the Court found no "legitimate reasons" for the Appellants to object because the "umbilical cord" between the manufacturer and the product is severed once the warranty expires and the goods are discarded.

Applying noscitur a sociis, the Court held that refurbishing to restore functionality is not a "change" that triggers Section 30(4) as it does not prejudice the proprietor’s reputation.

Regarding "reverse passing off," the Court held it is not an actionable tort under Section 27(2) of the Act, which only contemplates passing off one's goods as another's.

Even if it were, the Appellants failed the "initial interest confusion" test because consumers would not identify the de-branded HDDs as originating from the Appellants at the time of purchase.

It held that "reverse passing off" is foreign to Indian trademark jurisprudence.

The Court affirmed that original manufacturers cannot oppose the sale of refurbished "end-of-life" products if the acquisition was lawful and no material impairment was caused to the goods.

The Court maintained the Single Judge's directions requiring "full disclosure" packaging (identifying the original manufacturer and the lack of original warranty) to protect consumers, as the Respondents did not cross-appeal those conditions.