MinterEllison defends Calidad against claims by Epson

2 mins  13.12.2017 Robert Cooper, Sophie Chen

In the recent Federal Court of Australia decision, Calidad has successfully defended claims of patent infringement (in part), trade mark infringement, breach of statutory duty relating to criminal provisions of the Trade Marks Act.

In the recent Federal Court of Australia decision delivered by Justice Burley, Seiko Epson Corporation v Calidad Pty Ltd [2017] FCA 1403, MinterEllison successfully defended Calidad Pty Ltd and others (Calidad) against the majority of claims brought by Seiko Epson Corporation and Epson Australia Pty Ltd (Epson).

Calidad successfully defended claims of patent infringement (in part), trade mark 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. 

Calidad's successful defence of the majority of Epson's claims means that Calidad can continue to trade in the remanufactured printer cartridges that it has been selling to customers since April 2016.

Amongst other matters, the case considers in what circumstances the:

  1. importation of repaired/remanufactured products from overseas might amount to patent infringement;
  2. sale of repaired/remanufactured goods that still bear original trade marks might constitute trade mark infringement; and
  3. covering or removal of an original trade mark on repaired/remanufactured goods (or dealing with such goods) might constitute a violation of criminal penalty provisions in the Australian Trade Marks Act.

The matter was led by MinterEllison partners Robert Cooper and Sophie Chen, with support from Megan Evetts and Tony Middleton.
"This decision has important implications for companies that deal in repaired/remanufactured products and may also have implications for those that deal with second hand goods, even where they are not repaired/remanufactured." said Mr Cooper.

"This case unveils the complexities involved for these companies. The outcome in each case is likely to be highly dependent on their own facts. Relevant factors that will likely affect the outcome of any such case include, for example, the types of products, the repair/remanufacturing processes that are undertaken, the location that the processes are performed in and the patents involved."

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