Debranding and refurbishing "end-of-life" goods with disclosure 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" (expiry of manufacturer warranty), they are extracted from discarded equipment and imported into India.

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

The Appellants sued for permanent injunction, alleging trademark infringement, passing off, and "reverse passing off".

A learned Single Judge permitted the sale of these refurbished HDDs subject to specific packaging disclosures regarding the original manufacturer and the lack of original warranty.

The Appellants challenged this interlocutory order.

The court primarily applied 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 interpreted Section 30(3) as a limit on the effect of registration, incorporating the principle of "International Exhaustion," which holds that once goods are lawfully put on the market anywhere in the world by the proprietor, further dealings do not constitute infringement.

Section 30(4) acts as an exception to this limit where "legitimate reasons" exist, such as when the condition of goods is "changed or impaired".

The court relied on the Noscitur a Sociis principle to interpret "changed" in light of "impaired".

It further followed Kapil Wadhwa v. Samsung Electronics Co. regarding parallel imports and exhaustion.

Satyam Infoway Ltd v. Siffynet Solutions (P) Ltd regarding the ingredients of passing off.

The Court held that Section 29 is the sole repository of "infringement"; since the Respondents efface the Appellants' marks before sale, they do not "use" the marks in trade, thus no infringement occurs under Section 29.

Consequently, Section 30(3) and 30(4) are not technically triggered as there is no underlying infringement to excuse or reinstate.

Even if Section 30(3) applied, the acquisition was "lawful" because the Appellants proved no contractual or statutory bar preventing OEMs from selling end-of-life HDDs.

The Court rejected the Section 30(4) "impairment" argument, reasoning that "change" must be negative or prejudicial to the proprietor's reputation; here, the "umbilical cord" of the trademark was severed once the HDDs reached end-of-life and warranty expired.

Regarding "reverse passing off," the Court ruled it is not an actionable tort under Indian trademark law, which requires the defendant to pass off their goods as the plaintiff's.

Furthermore, the lack of "initial interest confusion" and the absence of proof that consumers identify the product's origin via internal hardware shapes defeated the passing off claims.

"Reverse passing off" is foreign to Indian Trade Mark jurisprudence.

Refurbishment of de-branded goods does not constitute "use" under Section 29.

The principle of International Exhaustion protects the Respondents' dealings in lawfully acquired goods.

The Court maintained the Single Judge's directions regarding packaging disclosures solely because the Respondents did not cross-appeal and to ensure the Appellants were not "worse off" by appealing.

Refurbishment and sale of de-branded, end-of-life HDDs with full disclosure is legally permissible.