Seiko Epson Corporation v Calidad Pty Ltd

Seiko Epson Corporation brought an action against Calidad Pty Ltd in the Federal Court of Australia, alleging infringement of patents and trade marks, misleading or deceptive conduct under the Australian Consumer Law, and breach of a settlement deed. Seiko claimed that Calidad infringed their patents by remanufacturing printer ink cartridges that embodied a claimed invention. They also alleged that Calidad's use of the word "Epson" on their goods infringed their trade marks, and that Calidad's description of their remanufactured goods as "new" constituted misleading or deceptive conduct. Seiko further claimed that Calidad breached a settlement deed between the parties.

The court had to decide several legal issues, including whether an implied licence to import, sell, and use patented goods is conferred upon sale without restriction, and whether modifications to goods extinguish any such implied licence. The court also had to consider the construction of the terms of patents and the application of this construction to the parties' embodiments. Additionally, the court had to determine whether Calidad's conduct fell within section 148 of the Trade Marks Act 1995 (Cth) and whether that section imposes a statutory duty and associated civil right of action for breach of that duty. Finally, the court had to decide whether Calidad's use of the word "new" to describe their remanufactured goods was misleading or deceptive, and whether Calidad breached the settlement deed.

The court found that Calidad did not infringe Seiko's patents, as there was no implied licence to import, sell, and use patented goods conferred upon sale without restriction. The court also found that Calidad's modifications to the goods did not extinguish any such implied licence. The court held that Calidad's use of the word "Epson" on their goods did not infringe Seiko's trade marks, as it was not used in a trade mark sense. The court further found that Calidad's conduct did not fall within section 148 of the Trade Marks Act 1995 (Cth), and that section 148 did not impose a statutory duty and associated civil right of action for breach of that duty. The court also found that Calidad's use of the word "new" to describe their remanufactured goods was not misleading or deceptive, as the word "new" was understood by consumers to mean that the product was newly available from Calidad. Finally, the court found that Calidad breached the settlement deed.

The court ordered the parties to confer and provide joint draft short minutes of order reflecting the findings set out in the reasons, including on the question of costs and tracking any areas of disagreement. The parties were also required to provide written submissions setting out the basis on which they contended their position was to be preferred. The matter was listed for case management.