Epson Claims Trademark Battle Win

According to Australian-based media crn.com, Epson was successful in the Federal Court of Australia against aftermarket cartridge seller Calidad, in a patent infringement case.

RT Media broke news on this case back on December 11, 2017 following Justice Burley’s decision stating Calidad had successfully defended claims of patent infringement (in part), trademark infringement, breach of statutory duty relating to criminal provisions of the Trade Marks Act and misleading or deceptive conduct with respect to Calidad’s importation and sale of particular remanufactured household printer cartridges. This is the first Australian decision to consider a number of legal principles relating to repaired/remanufactured products.

A further commentary by Australian patent attorney Dr Mark Summerfield was published in RT Media’s Imaging World magazine and online on December 22, 2017.

CRN correctly reports Epson had accused Calidad of infringing on its trademark for “remanufactured” printer cartridges. “Calidad, who sells aftermarket Epson ink cartridges in Australia were accused of a breach of statutory duty for allegedly obscuring or removing Epson trademarks from its products, misleading or deceptive conduct relating to an online advertisement, and a breach of a settlement deed related to a 2013 trademark dispute.”

CRN also report accurately, “Justice Burley conceded that Calidad had inadvertently breached its settlement with Epson as the result of an honest mistake. Calidad sales manager James Kenyon said the “most likely explanation” was that a store had returned aftermarket cartridges but accidentally repacked them in an Epson box. Calidad then sold these returned cartridges to an Epson “trap purchaser”. Since then, Calidad has implemented a policy to inspect any returned Epson remanufactured cartridges to ensure that they contain the right product, and not a generic cartridge. Judge Justice Burley said he was” satisfied by the explanation provided by Mr Kenyon that the sale of the generic cartridges arose as a result of a series of unfortunate events, and that the system now in place ensures that there will be no repetition”.

However, in professional opinion, provided exclusively to RT Media, each side succeeded in some aspects of its case and failed in others.

It was not a clear win to Seiko-Epson as CRN have declared. The headline “Epson beats Sydney remanufactured cartridge seller Calidad in their trademark battle” is misleading because Epson lost its trademark case against Calidad and was only successful in relation to part of its patent infringement claim.

Calidad was successful in relation to the remaining patent infringement claims (which all related to the current remanufacturing process), the trademark claims and the misleading or deceptive conduct claims. Here is Justice Burley’s summary:

“Based on the admissions made by Calidad, I have found that the Calidad settlement parties have acted in breach of the settlement deed in the limited respect established by the trap purchase, and by infringing the 643 patent. Otherwise, I have rejected the balance of Seiko’s claims, which concern patent infringement in respect of the products that Calidad currently sells, trademark infringement and misleading and deceptive conduct.”

As yet, no orders have been made in relation to costs and damages. There was a ‘case management’ hearing on 20 December 2017, and the court records indicate that a further judgment has been reserved. This suggests the parties did not agree on the form of further orders, and Justice Burley will have to rule, unless they reach a settlement in the meantime. It also means that there may still be an opportunity for either or both to appeal, following any final ruling on costs and damages.