01 MAR 2018

Printer Error! Intellectual property and

recycled printer cartridges, Part 2
BY RICHARD HOAD, DEBORAH POLITES

Seiko Epson sets out some limitations on the extent to which trade mark owners will be
able to enforce their rights in relation to trade marks impressed into the products
themselves.

Look closely at a "recycled" printer cartridge and you may nd the original manufacturer's trade mark impressed into
the plastic. Is the sale of such printer cartridges an infringement of the original equipment manufacturer's trade
mark? This was the issue confronted in a recent Federal Court case.

In Seiko Epson Corporation v Calidad Pty Ltd [2017] FCA 1403 (29 November 2017), the Federal Court considered the
legal implications of Calidad's sales of refurbished cartridges for Epson printers. Spent Epson printer cartridges were
legitimately obtained by a third party outside Australia, re lled and modi ed so that they would work again, and then
sold in Australia as cartridges suitable for Epson printers.

We have already considered Seiko's claims of patent infringement in relation to the refurbished cartridges. Seiko also
alleged that the sale of the refurbished cartridges infringed its trade marks, involved an o ence under the Trade
Marks Act relating to unauthorised tampering with trade marked goods, and contravened the Australian Consumer
Law. Justice Burley rejected these claims, emphasising the importance of making a common sense, practical
assessment of the likely impact on consumers when considering questions of trade mark infringement.

Miniscule brand inside packaging is not trade mark use

The EPSON trade mark was impressed into the plastic of the cartridges themselves by Seiko. When the cartridges
were refurbished, some e orts had been made to remove or obscure the EPSON trade mark either by marking the
plastic or by placing stickers over it. Seiko argued that these attempts had been ine ectual, and that the sale of the
refurbished cartridges bearing the EPSON trade mark infringed Seiko's trade mark rights.

Justice Burley accepted that the EPSON trade mark remained visible on some of the cartridges. However, it was a
"miniscule" representation of the trade mark. In order for a trade mark to be infringed, the infringer must be using
the trade mark "as a trade mark", that is, as a "badge of origin" to indicate the source of the product. Justice Burley
considered that the "miniscule" EPSON trade mark, as it appeared on the repurposed cartridges, was not being used
"as a trade mark" in this context.

Of particular importance was the fact that the refurbished cartridges were sold inside boxes marked clearly with the
CALIDAD trade mark. The boxes also had a description of the product as an "alternative to Epson". The boxes were
sealed with a sticker and the cartridge inside was in an additional plastic wrapping. Only when those layers of
wrapping were removed would the tiny word EPSON on the product be seen. Both parties agreed that, even if the
trade mark is not visible at the point of sale, there may still be infringement if the trade mark is seen later and is
recognised as a badge of origin. In the present case, however, Justice Burley held that "it is probable that a consumer
would not discern the minute word Epson on the cartridge" and that, even if consumers did so, they would be
unlikely to regard it as a badge of origin.

Calidad's changes did not amount to illegal tampering