“52. To that I would add this: although it is inevitable that when an expert is asked what he would understand from a prior document's teaching he will give an answer as an individual, that answer is not as such all that helpful. What matters is what the notional skilled man would understand from the document. So it is not so much the expert's personal view but his reasons for that view—these the court can examine against the standard of the notional unimaginative skilled man. … 53. Thus in weighing the views of rival experts as to what is taught or what is obvious from what is taught, a judge should be careful to distinguish his views on the experts as to whether they are good witnesses or good teachers—good at answering the questions asked and not others, not argumentative and so on, from the more fundamental reasons for their opinions. Ultimately it is the latter which matter—are they reasons which would be perceived by the skilled man?”
“The present disclosure relates to consumable items in printers and related equipment. More particularly, the present disclosure relates to a system for tagging consumable supply items that are used in equipment, such as printers, used to produce data bearing identity documents, including cards such as identification cards, drivers licenses, credit cards and the like, and booklet such as passports and the like, as well as to methods resulting from the use of tagged consumables.”
“The use of radio frequency (RF) identification tags on consumer supply items of printers is known in the art.”
“There is, however, a continuing need for improvements relating to the use of memory tags on consumable items that are used in the production of data bearing identity documents.”
“The claimed invention can be better understood in view of the embodiments described hereinafter. In general, the described embodiments describe preferred embodiments of the invention. The attentive reader will note, however, that some aspects of the described embodiments extend beyond the scope of the claims. To the respect that the described embodiments indeed extend beyond the scope of the claims, the described embodiments are to be considered supplementary background information and do not constitute definitions of the invention per se. This also holds for the subsequent ‘Brief Description of the Drawings’ as well as the ‘Detailed Description of the Invention.’”
“The present disclosure provides improvements relating to the use of identification tags on consumer will supply items used in identity document production equipment. The use of identification tags on the consumer will supply items allows the document production equipment to recognise the consumable supply items that are loaded into each piece of equipment. The equipment can then indicate a variety of activities that are based on the loaded supply item. The activities are designed to enhance the operation of equipment for the equipment operator and to provide added value to those customers who utilise consumable supply items that are recognised by the equipment.”
“[0011] In one aspect of the invention, a consumable supply item for a piece of data bearing document production equipment is provided. The supply item comprises a core, a ribbon material wound onto the core, and a memory element attached to the core. [0012] In another aspect of the invention, a printer is provided which comprises a ribbon material supply roll disposed on a spindle, a read/write memory element fixed to the supply roll, and a read/write unit for reading data from and writing data to the read/write memory element. 47. [0014] In another aspect of the invention, the read/write memory element is fixed to the take-up core upon which used print ribbon is wound, instead of being fixed to the supply core. In this embodiment, it is also preferred that ribbon amount data stored in the memory element pertaining to how much ribbon remains on the supply roll, is decremented based on print jobs performed by the printer. Print job information is available from the printer controller which controls operation of the printer in which the take-up core is used”
“The use of radio frequency signals to read and write data, and to provide power to identification tags, is well known in the art such as from [Fargo] and US 6,099,178. As the use of radio frequency identification tags is known, a description of how data is read from and written to the tag, and how the tags are powered by the radio frequency signals, is not provided herein.”
“Other known components of the read/write unit 28 that cooperate with the antenna 34 for reading and writing data to detect 20 also housed within the plastic cover 36. ” 52.In [0025] the specification states: “At present, RF identification tag technology is such that the tag 20 should be as close as possible to the read/write unit to provide optimal performance.”
“[0035] In current printer ribbon rolls without an RF ID tag, in order to determine the type of printer ribbon on the roll, it is necessary for the operator to manually identify the ribbon type to the printer by entering the ribbon type using a printer user interface unit. This process is time-consuming and inconvenient for the operator. It also requires a printer operator with sufficient skill to enter the ribbon type. Alternatively, it is known to automatically identify a print ribbon by advancing the print ribbon a certain distance to enable the printer to determine the print ribbon type. Because the print ribbon is advanced for identification purposes, this process waste ribbon that could have been used for printing. [0036] Because of the tag 20, the printer knows the type of ribbon on the roll by reading the code 50. Therefore, the printer can automatically optimize its operation based on the loaded ribbon type. Further, ribbon usage is reduced since the ribbon is not advanced for identification purposes. …”
“The tag has so far been described as being attached to a ribbon supply core. However, other tag locations are possible.”
“In addition, the tag could be positioned to hang off the end of the supply or take-up cylinders and not rotate with the cylinder during use. In such an embodiment, the tag would be fixed in position relative to the cylinder during printer operation, such as by the tag cooperating with a slot in the printer upon inserting the carrier into the printer. The tag could also be separate from the supply and take-up cylinders, and instead be placed by a user into the printer when the supply item is replaced.”
“[1] A consumable supply item (10, 60) for data bearing document production equipment, comprising: [2] a cylinder having first and second open ends and a spindle passageway extending along a rotation axis between the first and second open ends to enable the cylinder to be disposed on a rotatable spindle (12, 70, 72) of the production equipment; [3] a supply material (16, 62) wound on the cylinder (14, 64); and characterized by [4] a radio frequency identification tag comprising [5] a generally circular tag body (20,76) having an aperture formed therethrough that is configured to allow passage through the tag body (20, 76) of at least a portion of the spindle (12,70, 72) when the cylinder (14, 64) is disposed on the spindle (12, 70, 72), [6] an antenna (22) formed on the tag body (20, 76), and [7] a memory element (24) disposed on the tag body (20, 76), [8] wherein said generally circular tag body is attached to the cylinder (14, 64).”
“The consumable supply item (10, 60) of claim 1, wherein the cylinder (14, 64) is a take-up cylinder that takes-up supply material (16, 62) that has been used by the used by the production equipment.”
“The consumable supply item (10, 60) of any one of the preceding claims wherein the antenna (22) is circular and surrounds the aperture.”
“It follows that, even if information is neither disclosed by a specific item of prior nor common general knowledge, it may nevertheless be taken into account as part of a case of obviousness if it is proved that the skilled person faced with the problem to which the patent is addressed would acquire that information as a matter of routine. For example, if the problem is how to formulate a particular pharmaceutical substance for administration to patients, then it may be shown that the skilled formulator would as a matter of routine start by ascertaining certain physical and chemical properties of that substance (e.g. its aqueous solubility) from the literature or by routine testing. If so, it is legitimate to take that information into account when assessing the obviousness of a particular formulation. But that is because it is obvious for the skilled person to obtain the information, not because it is common general knowledge.”
“The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.”
“A question which often arises, and arises here, is whether the absence of a particular motive to take a particular step between the prior art and the invention is fatal to an obviousness attack. It must now be regarded as settled law that it is not. In Pharmacia v Merck[2001] EWCA Civ 1610 ;[2002] RPC 41 , Aldous LJ cited with approval a passage in Laddie J's judgment in Hoechst Celanese v BP Chemicals[1997] FSR 547 at 573. The court will readily assume that technicians and businessmen will wish to make trivial changes to what is known in order to produce essentially the same result. That is not to say motive is irrelevant: it is one of the many factors that has to be balanced in answering the statutory question. It is easier to show a step is obvious if there is a strong motivation to take it. If the advance is not as trivial as the Pharmacia and Hoechst cases require, the absence of motivation is a factor of which account must be taken in the balancing exercise.”
“To use the familiar example: if a piece of wood is satisfactorily screwed to another, there is no reason to take it apart and glue it instead; but it is certainly not inventive to do so. And it does not make it inventive if you say that doing so avoids the technical problem of how to fix together two pieces of wood without using screws.”
“A printer (120) for printing onto a substrate (180) includes a substrate feed mechanism (186) configured to secure the substrate (180) during printing and a print mechanism (124) configured to print on the substrate (180). A transceiver (140) is configured to transfer power through a non-physical link to a radio frequency (RF) circuit (142) carried on a printer supply (144) to thereby power the RF circuit (142). The transceiver (140) also responsively receives printer supply data through a non-physical link from the RF circuit (142).”
“The antenna 42 is positioned closely adjacent to the core 14A of the ribbon supply roll 14, so that it can transmit to and receive from ID tag 15 low power Radio Frequency (RF) signals. However, with more powerful signals or more sensitive electronics, the spacing can be any suitable distance.”
“The RFID tag 142 can be any such RFID tag such as those which can be purchased commercially. One type of RFID tag is available from TEMIC semiconductors a division of ATMEL located in San Jose, California. For example, the TEMIC Model No. TK5550 is one such RFID tag.”
“The decision as to whether there was an extension of disclosure must be made on a comparison of the two documents read through the eyes of a skilled addressee. The task of the Court is threefold: (1) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application. (2) To do the same in respect of the patent [as proposed to be amended]. (3) To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly.”
“4. In Richardson-Vicks' Patent[1995] RPC 568 at 576 I summarised the rule in a single sentence: ‘I think the test of added matter is whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification.’ I went on to quote Aldous J in Bonzel. His formulation is helpful and has stood the test of time. 5. The reason for the rule was explained by the Enlarged Board of Appeal of the EPO in G1/93 ADVANCED SEMICONDUCTOR ‘I think the test of added matter is whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification.’ I went on to quote Aldous J in Bonzel. His formulation is helpful and has stood the test of time. PRODUCTS/Limiting feature [1995] EPOR 97 at [Reasons 9]: 123. ‘With regard to Article 123(2) EPC, the underlying idea is clearly that an applicant shall not be allowed to improve his position by adding subject-matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying upon the content of the original application.’ 6. Mr Richard Arnold QC provided a clear articulation as to how the legal security of third parties would be affected if this were not the rule: ‘The applicant or patentee could gain an unwarranted advantage in two ways if subject-matter could be added: first, he could circumvent the "first-to-file" rule, namely that the first person to apply to patent an invention is entitled to the resulting patent; and secondly, he could gain a different monopoly to that which the originally filed subject-matter justified.’ 7. Kitchin J has recently helpfully elaborated upon the Bonzel formulation in European Central Bank v Document Security Systems[2007] EWHC 600 (Pat) ,26th March 2007 : ‘[97] A number of points emerge from this formulation which have a particular bearing on the present case and merit a little elaboration. First, it requires the court to construe both the original application and specification to determine what they disclose. For this purpose the claims form part of the disclosure (s.130(3) of the Act), though clearly not everything which falls within the scope of the claims is necessarily disclosed. [98] Second, it is the court which must carry out the exercise and it must do so through the eyes of the skilled addressee. Such a person will approach the documents with the benefit of the common general knowledge. [99] Third, the two disclosures must be compared to see whether any subject matter relevant to the invention has been added. This comparison is a strict one. Subject matter will be added unless it is clearly and unambiguously disclosed in the application as filed. [100] Fourth, it is appropriate to consider what has been disclosed both expressly and implicitly. Thus the addition of a reference to that which the skilled person would take for granted does not matter: DSM NV's Patent[2001] RPC 25 at [195]-[202]. On the other hand, it is to be emphasised that this is not an obviousness test. A patentee is not permitted to add matter by amendment which would have been obvious to the skilled person from the application. [101] Fifth, the issue is whether subject matter relevant to the invention has been added. In case G1/93, Advanced Semiconductor Products, the Enlarged Board of Appeal of the EPO stated (at paragraph [9] of its reasons) that the idea underlying Art. 123(2) is that that an applicant should not be allowed to improve his position by adding subject matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application. At paragraph [16] it explained that whether an added feature which limits the scope of protection is contrary to Art. 123(2) must be determined from all the circumstances. If it provides a technical contribution to the subject matter of the claimed invention then it would give an unwarranted advantage to the patentee. If, on the other hand, the feature merely excludes protection for part of the subject matter of the claimed invention as covered by the application as filed, the adding of such a feature cannot reasonably be considered to give any unwarranted advantage to the applicant. Nor does it adversely affect the interests of third parties. [102] Sixth, it is important to avoid hindsight. Care must be taken to consider the disclosure of the application through the eyes of a skilled person who has not seen the amended specification and consequently does not know what he is looking for. This is particularly important where the subject matter is said to be implicitly disclosed in the original specification.’ 8. When amendment of a granted patent is being considered, the comparison to be made is between the application for the patent, as opposed to the granted patent, and the proposed amendment (see the definition of ‘additional matter’ in s.76(1)(b)). It follows that by and large the form of the granted patent itself does not come into the comparison. This case was to some extent overcomplicated by looking at the granted patent, particularly the granted claim 1. 9. A particular, and sometimes subtle, form of extended subject matter (what our Act calls ‘additional matter’) is what goes by the jargon term ‘intermediate generalisation’. Pumfrey J described this in Palmaz's European Patents[1999] RPC 47 , 71 as follows: ‘If the specification discloses distinct sub-classes of the overall inventive concept, then it should be possible to amend down to one or other of those sub-classes, whether or not they are presented as inventively distinct in the specification before amendment. The difficulty comes when it is sought to take features which are only disclosed in a particular context and which are not disclosed as having any inventive significance and introduce them into the claim deprived of that context. This is a process sometimes called “intermediate generalisation”.’”
“The invention relates to printers, laminators and other equipment to produce data bearing identification or financial documents, including plastic cards such as financial (e.g. credit and debit) cards, drivers’ licenses, national identification cards, and other similar cards, as well as identification and financial documents, such as passports. In particular, the invention relates to supply items used in such equipment, and to a method of facilitating the loading of the supply item into the equipment.”
“[0003] These ribbons need to be replaced as they are used up. However, replacement of the ribbon can be difficult, especially for those who are inexperienced or unfamiliar with the printer. It is not unknown for operators of such printers to incorrectly position the take-up cylinder where the supply cylinder is intended to be positioned, and vice-versa, or to try to position the supply and take-up cylinders at incorrect positions within the printer. In addition, the supply and take-up cylinders can be positioned upside down in the printer so that the ribbon is in the wrong wind direction (e.g. unwound from the supply cylinder and wound onto the take up cylinder from the bottom of the cylinders rather than the top). [0004] Similar difficulties exist for other supply items, for example webs that carry laminate patches, cleaning tape or ribbon, holographic overlays, and other exhaustible web materials, used in equipment for producing identification and financial documents. There is need for improvement to facilitate loading of supply items into data bearing identification or financial document production equipment.”
“The supply item and the carrier are modified to facilitate loading of the supply item onto the carrier in the proper orientation, and the carrier can be more easily loaded into the production equipment in the correct orientation. A variety of modifications can be utilized to achieve these goals. The preferred modification will be discussed in detail below.”
“The ribbon 12 includes a take-up end 16 that is attached to a take-up cylinder 18 that is cylindrical in shape and upon which used ribbon is wound.”
“[0018] The supply cylinder 14 includes first and second 5 ends 20a, 20b and is generally hollow from the first end to the second end. Likewise, the take-up cylinder 18 includes first and second ends 22a, 22b and is generally hollow from the first end to the second end. Preferably, the ends 20a, 20b, 22a, 22b of the cylinders 14, 18 are designed to facilitate loading of the cylinders 14, 18 onto a carrier 24 (to be later described in detail) in the proper orientation, thereby simplifying ribbon replacement. More preferably, a difference in the geometry of the ends of the cylinders 14, 18 is used to achieve the simplified replacement. [0019]With reference to Figures 1 and 3, the ends 20a, 20b of the cylinder 14 each define an opening having an area, with the area of the opening at the end 20a being substantially equal to the area of the opening at the end 20b. In addition, the ends 22a, 22b of the cylinder 18 each define an opening having an area. However, the end 22a of the cylinder 18 is closed by a wall 26 that forms part of a cap 28 that is connected to the end 22 of the cylinder 18. An opening 30 is provided in the wall 26. Thus, the area of the opening 30 at the end 22a is different than the area of the opening at the end 22b, and the area of the opening 30 is different than the area of the opening at the end 20a of the cylinder 14. [0020]The difference in the geometry of the openings at the ends 20a, 22a of the cylinders 14, 18 limit how the cylinders 14, 18 can be connected to the carrier 24. While the end of the cylinder 18 is described as having an opening 30 with an area less than the opening at the end of the cylinder 14, it is to be realized that the reduced area opening can be provided on the cylinder 14 rather than on the cylinder 18….”
“… The side wall 86 includes first and second support structures that project inward from the wall 86 for supporting the free ends of the pins 46, 58. Each support structure comprises a base section 90a, 90b that is closed at the bottom thereof to support the ends of thepins, for example pins 46, 58, thereon, and a guide section 92 composed of converging wall portions that converge toward the base section 90a, 90b. The converging construction of the guide sections 92 help to guide the respective free ends of the pins 46, 58 into the respective base sections 90a, 90b, thereby making it easier for an operator of the printer to insert the carrier 24 into the printer 70. As best shown in Figure 7, it is preferred thatthe base sections 90a, 90b generally match the size of the ends of the pins 46, 58, in which case the size of the base section 90a for the end of the pin 46 is larger thanthe size of the base section 90b for the end of the pin 58.”
“[1]A supply item for data bearing identification or financial document production equipment, [2] and loadable onto a supply spindle and a take-up spindle of a carrier, comprising: [3] a supply cylinder having first and second ends, [4] and having ribs provided on the interior surface to prevent rotationrelative to the supply spindle, [5] the first end defining a first opening having a first geometry and the second end defining a second opening; [6] a take-up cylinder having first and second ends, [7] and having ribs provided on the interior surface to prevent rotationrelative to the supply spindle, [8] the first end of the take-up cylinder defining a first opening having a second geometry, the second geometry is different than the first geometry and the second end defining a second opening; [8] a web material wound onto the supply cylinder; the web material including a take-up end that is attachable to the take-up cylinder; [9] wherein the first end of at least one of the supply cylinder or the takeup cylinder defining an inner perimeter where the first end is partially closed when viewed in an end plan view, [10] the first opening at the first end of the supply cylinder or the take-up cylinder being disposed within the inner perimeter, [11] the first opening having an area less than an area of the second opening at the second end of the supply cylinder or the take-up cylinder [12] to limit how the cylinders can be connected to the carrier.” 145. Claims 2, 6, 7, 8, 9 and 10 are as follows: “2. The supply item of claim 1, wherein the first opening in the first end of the supply cylinder defines a first area, and the first opening in the first end of the take-up cylinder defines a second area, and the second area is less than the first area. 6. The supply item of claim 2, wherein the second opening of the second end of the supply cylinder defines a third area, and the second opening of the second end of the take-up cylinder defines a fourth area, and the third area is substantially equal to the fourth area. 7. The supply item of claim 2, wherein the first end of the take-up cylinder is closed by a wall, and the second geometry is defined in the wall. 8. The supply item of claim 7, wherein the wall comprises a cap that is attached to the take-up cylinder at the first end thereof. 9. The supply item of claim 2, wherein the first end of the supply cylinder is closed by a wall, and the first geometry is defined in the wall. 10. The supply item of claim 9, wherein the wall comprises a cap that is attached to the supply cylinder at the first end thereof” 146.Proposed new claim 11 is as follows: “The supply item of any preceding claim further comprising a carrier to which the cylinders can be mounted.”
“[1] A method of facilitating loading of a supply item into data bearing identification or financial document production equipment, the method comprising: [2] providing a carrier according to claim 1 1 2including a supply spindle assembly and a take-up spindle assembly; [3] providing a supply item according to claim 1 including a supply cylinder, a take-up cylinder, and a web material wound onto the supply cylinder and having an end thereof attached to the takeup cylinder, said supply cylinder intended to be disposed on said supply spindle assembly and said take-up cylinder intended to be disposed on said take-up spindle assembly; [4] wherein at least one of said supply cylinder and said take-up cylinder, and at least one of said supply spindle assembly and said take-up spindle assembly, are designed so that said supply cylinder or said take-up cylinder can only be disposed on said supply spindle assembly or said take-up spindle assembly respectively; and [5] inserting said carrier with said supply cylinder and said take-up cylinder thereon into the document production equipment.”
“Subject to the following provisions of this section, a person (other than the proprietor of the patent) also infringes a patent for an invention if while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom.”
“If the Printer proves to be defective in materials or workmanship during the warranty period, Datacard will, at its option, repair or replace or refund the price paid for the printer. … Repairs, adjustments or parts replacement required due to accident, abuse, misuse, unauthorized modification or maintenance of the Printer or software, or the use of peripherals, supplies or software that are not supplied by Datacard will be charged using Datacard’s then current rates.”
“70. Where however it is alleged that the defendant has infringed by making the patented product, the concepts of an implied licence or exhaustion of rights can have no part to play. The sale of a patented article cannot confer an implied licence to make another or exhaust the right of the patentee to prevent others from being made. A repair of the patented product is by definition an act which does not amount to making it: as Lord Halsbury L.C. said of the old law in Sirdar Rubber Co. Ltd. v. Wallington, Weston & Co. (1907) 24 R.P.C. 539, 543: ‘you may prolong the life of a licensed article but you must not make a new one under the cover of repair.’ 71. Repair is one of the concepts (like modifying or adapting) which shares a boundary with ‘making’ but does not trespass upon its territory. I therefore agree with the Court of Appeal that in an action for infringement by making, the notion of an implied licence to repair is superfluous and possibly even confusing. It distracts attention from the question raised by section 60(1)(a), which is whether the defendant has made the patented product. As a matter of ordinary language, the notions of making and repair may well overlap. But for the purposes of the statute, they are mutually exclusive. The owner’s right to repair is not an independent right conferred upon him by licence, express or implied. It is a residual right, forming part of the right to do whatever does not amount to making the product.”
“It is quite true that the defendants prolonged the useful life of the frame. It would otherwise presumably have been scrapped. But the screen was the combination of frame and meshes pretensioned by attachment with adhesive according to the invention. That product ceased to exist when the meshes were removed and the frame stripped down to the bare metal. What remained at that stage was merely an important component, a skeleton or chassis, from which a new screen could be made.”
“206. I have come to the conclusion that the activity of replacing the inner container of a Schütz IBC with a Werit bottle does not amount to making the patented product of claim 1 of either 307 or 967. It seems to me that the inventive concept of each of these claims is wholly embodied in the Schütz cage. Thus when the bottle is removed, the part retained embodies the whole of the inventive concept. 207. It is true that changing the bottle will mean that the forces between the cage and the bottle (and indeed the bottle and the ties or the bottle and the base) will be different: but that does not mean that the inventive concept resides partially in the bottle. In each case the invention is concerned exclusively with making a better cage. So much is clear from reading the patent.”
“IMPORTANT! Do not reverse the ribbon. Damage may occur to the thermal printer head!”
“Q. Now, what I want you to do now is to consider a skilled team. This time the date is July 2002 rather than December 2001, but I am not sure that matters too much. I want you to consider a team who has been tasked with making a new card printer in July 2002 and they have the Fargo ribbons and the Fargo printer in front of them. A. Okay. Q. Now, the Fargo printer used direct loading onto hubs in the printer? A. Correct. Q. We discussed yesterday that was one well-known way of loading ribbons, but it's a way that some people might not like because it's fiddly to drop the ribbons onto the hubs in the confined area of the printer? A. Correct. Q. One well-known alternative to directly onto hubs was directly onto spindles? A. Correct. Q. And we saw those in those Eltron printers we looked at yesterday? A. Correct. Q. Of course this requires a side opening so you can get at the spindles, which has the benefit of making it easier to slide the ribbons on rather than having to fiddle down in the bowels of the machine? A. It also had the disadvantage of having to feed the ribbon under the print head, which was also a problem in that particular case. Q. It's like all things in life, everything: there are advantages and disadvantages. But there is certainly a disadvantage with having -- the loading of the ribbon in the Fargo Pro-L printer would be avoided? A. I agree. Q. Now, so far, if you were starting with a project to design a new printer, designing a printer that used direct loading onto spindles as opposed to direct loading onto hubs would just be doing an obvious alternative way that was very well-known in the field? A. Correct. Q. If you are using spindles, of course it's immediately apparent that what you need is you need ribs inside the cylinders so that the spindles can engage with the ribs and can drive the cylinder? A. That would be a logical conclusion, yes. Q. Of course it was very common to have ribs on both cylinders so you could drive the ribbon both ways? A. Correct. Q. Now, insofar as the inserts are concerned, that obviously partially closes the end of the cylinder? A. You are talking about the Fargo inserts? Q. The Fargo -- A. Yes. Q. And to that extent, it's no different from the cap in the PlusRibbon, is it? A. In geometry, no. Q. Insofar as with appropriately sized and shaped spindles or pins the Plus-Ribbon can limit error loading, the same applies to the Fargo ribbon; that's right, isn't it? A. Yes, in different ways. Yes.”
“Q. Now, he has four ends of his cylinders, one of which is smaller than the other? A. Okay. Q. I want you to assume he's going down the path that Datacard went down of mounting that onto a carrier with full length spindles. A. Okay. Q. What I want to suggest to you is that, in order to keep the obvious error loading advantage of the Fargo ribbons, he is going to have to make sure that he has a way of distinguishing the one end that's different? A. Okay. Q. The obvious way to do that is to take those pins at the end of the Datacard carrier and make one of them smaller so it will only fit through the small hole? A. That would certainly be one way of doing it, yes. Q. That would be a piece of straightforward design? A. I agree, yes.”
“Q. Now, of course if we are going to take that carrier, it has to be received into the printer? A. Correct. Q. And there has to be something inside the printer that's going to receive it and support it? A. Correct. Q. We saw from the Datacard printers that were around at the time that there were the receiving ends that took hold of each end of the spindles and the pins sat in recesses or slots? A. Yes. The diagram wasn't very clear, but I assume that what you are saying is correct, yes. Q. Of course anybody who has seen those Datacard products that were in the market and around, they would have seen how they worked? A. Correct. Q. Of course one of the things that you explain in your reports is that it's important that the ribbon tension is maintained evenly? A. Correct. Q. What you don't want is when the printer drives it for the ends of the spindles to wobble around so that you get different tension? A. Correct. Q. So what you want to make sure is that there is no wobble in your spindle ends, as it were? A. Correct. Q. The obvious way to do that is to make sure that the slots into which the spindle ends fit are shaped so that there is no play and they cannot wobble around? A. Yes. Assuming you are taking the spindle end approach, yes, that would be true”
“... determination of the ‘extent of the protection conferred’ by a patent under Article 69(1) EPC is a determination of what is protected, in terms of category plus technical features; whereas the ‘rights conferred’ by a patent are a matter solely for the designated Contracting States, and are related to how such subject-matter is protected. It follows that when deciding upon the admissibility of any amendment to the claims of a patent which is proposed in opposition proceedings (whether or not such amendment involves a change of category of claim), what has to be considered and decided is whether the subject-matter which is protected by the claims, as defined by their categories in combination with their technical features, is extended. It is not necessary to consider the national laws of the Contracting States in relation to infringement when making such a decision, however.”
“Apparatus for embossing metal plates; manual and electric imprinters for printing information from an embossed card; printing apparatus; parts for manual and electric imprinters; rollers and platens; apparatus for inserting plastic cards into customer transmittal forms; all relating to data encoded cards; all included in Class 7.”
“Apparatus for encoding plastic cards; apparatus for verifying (checking) cards containing magnetic strips; microprocessors for control purposes; electronic input apparatus and visual display units, all for automatically encoding and processing plastic cards or card transmittal forms for mailing; point of sale transaction terminals; printers for use with computers; computer terminals; keyboards; slip printers; roll printers, continuous feed printers, parts therefor; computer programs; personal identification number transaction pads; all relating to data encoded cards; all included in Class 9.”
“Article 5 Rights conferred by a trade mark 1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered; (b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark 2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. 3. The following, inter alia, may be prohibited under paragraphs 1 and 2: … (b) offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder; (c) importing or exporting the goods under the sign; (d) using the sign on business papers and in advertising. … Article 12 Limitation of the effects of a Community trade mark 1. A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade: … (a) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts; provided he uses them in accordance with honest practices in industrial or commercial matters”
“a sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer.”
“… there is no reason to suppose that the Court meant to soften the edges of ‘strict identity’ very far.”
“(6) Where clicking on the sponsored link referred to in question 5 above leads the user directly to advertisements or offers for sale of goods identical to those for which the trade mark is registered under the sign placed on the website by other parties, some of which infringe the trade mark and some which do not infringe the trade mark by virtue of the differing statuses of the respective goods, does that constitute use of the sign by the operator of the online marketplace ‘in relation to’ the infringing goods within the meaning of 5(1)(a) of [Directive 89/104] and Article 9(1)(a) of [Regulation No 40/94]? … (8) Does it make any difference to the answers to questions 5 to 7 above if the use complained of by the trade mark proprietor consists of the display of the sign on the web site of the operator of the online marketplace itself rather than in a sponsored link?”
“(6) Where clicking on the sponsored link referred to in point 5 above leads the user directly to advertisements or offers for sale of goods identical to those for which the trade mark is registered under the sign placed on the website by other parties, some of which infringe the trade mark and some which do not infringe the trade mark by virtue of the differing statuses of the respective goods, that fact constitutes use of the sign by the operator of the electronic marketplace ‘in relation to’ the infringing goods within the meaning of Article 5(1)(a) of Directive 89/104 and Article 9(1)(a) of Regulation No 40/94, but it does not have an adverse effect on the functions of the trade mark provided that a reasonable average consumer understands on the basis of information included in the sponsored link that the operator of the electronic marketplace stores in his system advertisements or offers for sale of third parties. … (8) If the use complained of by the trade mark proprietor consists of the display of the sign on the website of the operator of the electronic marketplace itself rather than in a sponsored link on the website of a search engine operator, the sign is not used by the operator of the electronic marketplace ‘in relation to’ the infringing goods within the meaning of Article 5(1)(a) of Directive 89/104 and Article 9(1)(a) of Regulation No 40/94.”
“99. To my mind the fifth condition refers to the use of a sign for the purpose of identification of goods or services or distinguishing between goods or services (originating from different commercial origins). As the High Court submits, use of a sign in relation to goods or services means use for the purpose of distinguishing the goods and services in question, that is to say, as a trade mark as such. 100. This means that a trade mark is used in relation to goods both when it is used by the trade mark proprietor for the purposes of distinguishing his goods from a third party’s goods and when it is used by a third party to distinguish his goods from the trade mark proprietor’s goods. Moreover, a third party can use the trade mark to distinguish between the goods of the trade mark proprietor and other goods that may or may not be his own goods. If this analysis is correct, a party who is in the position of an intermediary or a marketplace operator also uses a sign ‘in relation to goods’ if he uses a sign which is identical with a trademark for the purpose of distinguishing between goods that are available through the use of his services and those that are not. 101. I recall that the Court concluded in Google France and Google that in most cases an internet user entering the name of a trade mark as a search term is looking for information or offers on the goods or services covered by that trade mark. When advertising links to sites offering goods or services of competitors of the proprietor of that mark are displayed beside or above of the natural results of the search, the internet user may perceive those advertising links as offering an alternative to the goods or services of the trade mark proprietor. Such a situation constitutes a use of that sign in relation to the goods or services of that competitor. 102. In my opinion that analysis is applicable also in situations where the relevant advertising links are not those of direct competitors of the proprietor of the trade mark offering alternative goods but those of electronic marketplaces offering an alternative source of the same goods covered by the trade mark with respect to the distribution network of the trade mark proprietor. …. 119. However, for the sake of clarity I should add that if the use complained of by the trade mark proprietor consists of the display of the sign on the website of an operator of an electronic marketplace itself rather than a sponsored link of a search engine we are not speaking of use of the trademark in relation to goods by the marketplace operator, but by the users of the marketplace. The operator’s activity consists of storing and displaying listings that the users upload to its system and of running a system for facilitating the conclusions of deals. It is no more using trade marks than a newspaper publishing classified ads mentioning trademarks where the identity of the seller is not revealed in the ad but must be requested from the newspaper. Hence, even if the listing of trade mark protected goods by users of an electronic marketplace may have an adverse effect on the origin, quality or investment function of a trademark, those effects cannot be attributed to the marketplace operator unless national legal rules and the principle of secondary liability for trade mark infringements apply. 120. It should be further noted that the activity of eBay consisting of search and display functions applicable to the listing is technically similar to that of internet search engines like Google (without the ‘add-on’ of the paid referencing service) though the business model it different. In eBay’s servers the searches relate to the listings stored by the users of the marketplace, in the case of internet search engines to those internet pages they have stored in their servers. Therefore, as regards these functions, the use and display of third party trade marks is not use of a sign in the sense of Article 5(1) of Directive 89/104 for the reasons set out in the judgment in Google France and Google. The marketplace operator also allows its clients to use signs which are identical with trade marks without using those signs itself.”
“Even assuming that I am right about use in relation to the trade mark proprietor’s goods, however, I consider that the current state of the ECJ’s jurisprudence is unclear with regard to at least three other inter-related questions. First, it is unclear precisely what the sixth condition adds to the fifth condition. Secondly, if the sixth condition does add something, it is unclear whether damage to functions other than the origin function can be relied upon to support a claim under Article 5(1)(a), and if so in what circumstances. Thirdly, if damage to functions other than the origin function can be relied on, it is unclear what the relation is between Article 5(1)(a) and Article 5(2) in double identity (identical sign and identical goods) cases. I shall elaborate briefly on each of these questions.” 255.In relation to the first of these questions, I observed at [302]: “It is difficult to see either from [Arsenal] or from the ECJ’s subsequent case law what the sixth condition adds to the fifth condition. In both Arsenal at [51]-[60] and Anheuser-Busch at [59]-[60] the Court held that the sixth condition is satisfied where the use of the sign is such as to create the impression that there is a material link in the course of trade between the goods concerned and the trade mark proprietor i.e. the sign functions as a trade mark. In Céline at [19]-[23] the Court held that the fifth condition is satisfied where essentially the same criterion is fulfilled. Furthermore, the Court seems to treat the sixth condition as being satisfied in cases where the fifth condition is satisfied and as being not satisfied in cases where the fifth condition is not satisfied. Arsenal was an example of a case where the Court held that the fifth condition was satisfied (see paragraph [53] and [56]), and accordingly the sixth condition was satisfied (see paragraph [60]). It distinguishedCase C-2/00 Hölterhoff v Freiesleben[2002] ECR I-4187 as a case where the fifth condition was not satisfied (see paragraph [54]), and therefore the sixth condition was not satisfied. Similarly, in Adam Opel the Court seems to have considered that the sixth condition was not satisfied because the fifth condition was not satisfied (see paragraphs [21]-[24]).”
“As to the second question, the jurisprudence of the ECJ cited in paragraphs 290, 291 and 299 above would seem to indicate that damage to functions other than the origin function, and in particular damage to the reputation of the trade mark, can be relied on.”
“58. The Court has already held that the exclusive right under Article 5(1)(a) of Directive 89/104 was conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor, that is, to ensure that the trade mark can fulfil its functions and that, therefore, the exercise of that right must be reserved to cases in which a third party’s use of the sign affects or is liable to affect the functions of the trade mark (Case C206/01 Arsenal Football Club[2002] ECR I-10273 , paragraph 51;Case C-245/02 Anheuser-Busch[2004] ECR I-10989 , paragraph 59; andCase C-48/05 Adam Opel [2007] ECR I1017, paragraph 21). These functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising. 59. The protection conferred by Article 5(1)(a) of Directive 89/104 is thus broader than that provided by Article 5(1)(b), the application of which requires that there be a likelihood of confusion and accordingly the possibility that the essential function of the mark may be affected (see, to that effect, Davidoff, paragraph 28, and O2 Holdings and O2 (UK), paragraph 57). By virtue of the 10th recital in the preamble to Directive 89/104, the protection afforded by the registered trade mark is absolute in the case of identity between the mark and the sign and also between the goods or services, whereas, in case of similarity between the mark and the sign and between the goods or services, the likelihood of confusion constitutes the specific condition for such protection. 60. It is apparent from the case-law cited in paragraph 58 of this judgment that the proprietor of the mark cannot oppose the use of a sign identical with the mark on the basis of Article 5(1)(a) of Directive 89/104 if that use is not liable to cause detriment to any of the functions of that mark (see also Arsenal Football Club, paragraph 54, and Adam Opel, paragraph 22). 61. Thus, the Court has already held that certain uses for purely descriptive purposes are excluded from the scope of application of Article 5(1) of Directive 89/104, because they do not affect any of the interests which that provision is intended to protect and accordingly do not constitute ‘use’ within the meaning of that provision (see, to that effect,Case C-2/00 Hölterhoff[2002] ECR I-4187 , paragraph 16). 62. It must, however, be made clear that the situation described in the main proceedings is fundamentally different from that which gave rise to the judgment in Hölterhoff, in that the word marks belonging to L’Oréal and Others are used in the comparison lists distributed by Malaika and Starion not for purely descriptive purposes, but for the purpose of advertising. 63. It is for the referring court to determine whether, in a situation such as that which arises in the main proceedings, the use which is made of the marks belonging to L’Oréal and Others is liable to affect one of the functions of those marks, such as, in particular, their functions of communication, investment or advertising. 64. Furthermore, in so far as that court has held that those marks have a reputation, their use in the comparison lists may also be prevented under Article 5(2) of Directive 89/104, the applicability of which does not necessarily require, as was held in paragraph 50 of this judgment, that there be a likelihood of detriment to the mark or its proprietor, provided that the third party takes unfair advantage of the use of that mark”
“38. The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (see, inter alia,Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I–3819, paragraph 17; Case C120/04 Medion [2005] ECR I–8551, paragraph 26; and Case C–102/07 adidas and adidas Benelux [2008] ECR I–2439, paragraph 28). 39. It follows that, should the rule set out in Article 5(1)(b) of Directive 89/104 be applicable to the dispute in the main proceedings, it will be for the national court to hold whether there is a likelihood of confusion when internet users are shown, on the basis of a keyword similar to a mark, a third party’s ad which does not enable normally informed and reasonably attentive internet users, or enable them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party. 40. The points made in paragraph 36 of this judgment [which summarised [89]-[90] of Google France] are applicable by analogy.”
“41. As to the fact that the relevant public is also likely to perceive such goods and the marks relating to them in circumstances unconnected with any act of purchase and to display, where appropriate, a lower level of attention on such occasions, the Court of First Instance was also fully entitled to observe, again in paragraph 59 of the judgment under appeal, that the existence of such a possibility does not prevent the taking into account of the particularly high level of attention exhibited by the average consumer when he prepares and makes his choice between different goods in the category concerned. 42. First, it is clear that, whatever the goods and marks at issue, there will always be situations in which the public faced with them will grant them only a low degree of attention. However, to require that account be taken of the lowest degree of attention which the public is capable of displaying when faced with a product and a mark would amount to denying all relevance, for the purpose of an assessment of the likelihood of confusion, to the criterion relating to the variable level of attention according to the category of goods, noted in paragraph 38 of this judgment. 43. Second, as observed by OHIM, the authority called upon to assess whether there is a likelihood of confusion cannot reasonably be required to establish, for each category of goods, the consumer’s average amount of attention on the basis of the level of attention which he is capable of displaying in different situations. 44. Nor does Arsenal Football Club militate against the foregoing analysis. 45. It must be noted that in that judgment the Court was called upon to rule on whether Article 5(1)(a) of Directive 89/104 was to be interpreted as precluding the sale and offer for sale of goods when they were marked with a sign identical to a mark registered by a third party in respect of the same goods. 46. After concluding that that was indeed the case, the Court stated that the fact that a sign to be found at the place of sale of the goods at issue drew consumers’ attention to the fact that those goods did not come from the proprietor of the mark did not affect such a conclusion. It is against that particular background that the Court, in paragraph 57 of Arsenal Football Club, referred in particular to the fact that even on the assumption that that type of notice may be relied upon by the interested party as a defence, it was possible, in the case which gave rise to that judgment, that some consumers, in particular if they came across the goods after they had been sold and taken away from the place of sale, might interpret the sign affixed to those goods as designating the proprietor of the mark concerned as the undertaking of origin of the goods. 47. In doing so, the Court did not in any way express a general rule from which it could be inferred that, for the purposes of an assessment of the likelihood of confusion within the meaning of Article 5(1)(b) of Directive 89/104 or Article 8(1)(b) of Regulation No 40/94, there is no need to refer specifically to the particularly high level of attention displayed by consumers when purchasing a certain category of goods. 48. Finally, it must be stated that, by asserting in paragraph 60 of the judgment under appeal that the question of the degree of attention of the relevant public to be taken into account for assessing the likelihood of confusion is different from the question whether circumstances subsequent to the purchase situation may be relevant for assessing whether there has been a breach of trade mark rights, as was accepted, as regards the use of a sign identical to the trade mark, in Arsenal Football Club, the Court of First Instance did not, contrary to the appellants’ submission, in any way hold that the concept of likelihood of confusion under Articles 8(1)(b) and 9(1)(b) of Regulation No 40/94 must be interpreted differently.”
“37. The existence of such a link in the mind of the public constitutes a condition which is necessary but not, of itself, sufficient to establish the existence of one of the types of injury against which Article 5(2) of Directive 89/104 ensures protection for the benefit of trade marks with a reputation (see, to that effect, Intel Corporation, paragraphs 31 and 32). 38. Those types of injury are, first, detriment to the distinctive character of the mark, secondly, detriment to the repute of that mark and, thirdly, unfair advantage taken of the distinctive character or the repute of that mark (see, to that effect, Intel Corporation, paragraph 27). 39. As regards detriment to the distinctive character of the mark, also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’, such detriment is caused when that mark’s ability to identify the goods or services for which it is registered is weakened, since use of an identical or similar sign by a third party leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is particularly the case when the mark, which at one time aroused immediate association with the goods or services for which it is registered, is no longer capable of doing so (see, to that effect, Intel Corporation, paragraph 29). 40. As regards detriment to the repute of the mark, also referred to as ‘tarnishment’ or ‘degradation’, such detriment is caused when the goods or services for which the identical or similar sign is used by the third party may be perceived by the public in such a way that the trade mark’s power of attraction is reduced. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark. 41. As regards the concept of ‘taking unfair advantage of the distinctive character or the repute of the trade mark’, also referred to as ‘parasitism’ or ‘free-riding’, that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation. 42. Just one of those three types of injury suffices for Article 5(2) of Directive 89/104 to apply (see, to that effect, Intel Corporation, paragraph 28).”
“112. Thus, the issue raised by Jacob L.J. at para.91 of his judgment in L'Oréal v Bellure, which led him to pose the fifth of the referred questions, has been answered, in essence, to the effect that an advantage obtained by the third party from the use of a similar sign, which is neither confusing nor otherwise damaging, is unfair if the advantage is obtained intentionally in order to benefit from the power of attraction, the reputation and the prestige of the mark and to exploit the marketing effort expended by the proprietor of the mark without making any such efforts of his own, and without compensation for any loss caused to the proprietor, or for the benefit gained by the third party. …. 136. … It is not sufficient to show (even if Whirlpool could) that Kenwood has obtained an advantage. There must be an added factor of some kind for that advantage to be categorised as unfair. It may be that, in a case in which advantage can be proved, the unfairness of that advantage can be demonstrated by something other than intention, which was what was shown in L'Oréal v Bellure. No additional factor has been identified in this case other than intention. 137. The question of unfair advantage has to be considered in the round, using a global assessment as indicated in Intel in para.79 of the Court's judgment. As Advocate General Sharpston said at para.65 of her Opinion in Intel, unfair advantage is the more likely to be found if the mark is more distinctive and if the goods or services are more similar. The Board of Appeal in Mango also said that unfair advantage is the more likely where there is greater similarity of goods as well as where the mark is more distinctive, but that was a case where the mark was identical, and strongly distinctive, and the goods were not the same but they were in an associated or overlapping field. The Court in L'Oréal v Bellure also referred to the importance of the strength of the reputation of the mark, and the strength of the reminder, reiterating what had been said in Intel.”
“So far as I can see this is saying if there is ‘clear exploitation on the coat-tails’ that is ipso facto not only an advantage but an unfair one at that. In short, the provision should be read as though the word ‘unfair’ was simply not there. No line between ‘permissible free riding’ and ‘impermissible free riding’ is to be drawn. All freeriding is ‘unfair.’ It is a conclusion high in moral content (the thought is clearly that copyists, even of lawful products should be condemned) rather than on economic content.”
“30. Firstly, according to Article 6(1)(c) of Directive 89/104, the trade mark owner may not prohibit a third party from using the mark in trade where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts. 31. It should be noted that that provision does not lay down criteria for determining whether a given intended purpose of a product falls within its scope, but merely requires that use of the trade mark be necessary in order to indicate such a purpose. 32. Moreover, since the intended purpose of the products as accessories or spare parts is cited only by way of example, those doubtless being the usual situations in which it is necessary to use a trade mark in order to indicate the intended purpose of a product, the application of Article 6(1)(c) of Directive 89/104 is, as the United Kingdom Government and the Commission of the European Communities have rightly pointed out in their observations, not limited to those situations. Therefore, in the circumstances of the main proceedings, it is not necessary to determine whether a product must be regarded as an accessory or a spare part. 33. Secondly, it should be noted, on the one hand, that the Court has already held that use of a trade mark to inform the public that the advertiser is specialised in the sale, or that he carries out the repair and maintenance, of products bearing that trade mark which have been marketed under that mark by its owner or with his consent, constitutes a use indicating the intended purpose of a product within the meaning of Article 6(1)(c) of Directive 89/104 (see BMW, paragraphs 54 and 58 to 63). That information is necessary in order to preserve the system of undistorted competition in the market for that product or service. 34. The same applies to the case in the main proceedings, the marks of which the Gillette Company is the owner being used by a third party in order to provide the public with comprehensible and complete information as to the intended purpose of the product which it markets, that is to say as to its compatibility with the product which bears those trade marks. 35. In addition, it is sufficient to note that such use of a trade mark is necessary in cases where that information cannot in practice be communicated to the public by a third party without use being made of the trade mark of which the latter is not the owner (see, to that effect, BMW, paragraph 60). As the Advocate General has pointed out in points 64 and 71 of his Opinion, that use must in practice be the only means of providing such information. 36. In that respect, in order to determine whether other means of providing such information may be used, it is necessary to take into consideration, for example, the possible existence of technical standards or norms generally used for the type of product marketed by the third party and known to the public for which that type of product is intended. Those norms, or other characteristics, must be capable of providing that public with comprehensible and full information on the intended purpose of the product marketed by that third party in order to preserve the system of undistorted competition on the market for that product. 37. It is for the national court to determine whether, in the circumstances of the case in the main proceedings, use of the trade mark is necessary, taking account of the requirements referred to in paragraphs 33 to 36 of this judgment and of the nature of the public for which the product marketed by LA-Laboratories is intended. 38. Thirdly, Article 6(1)(c) of Directive 89/104 makes no distinction between the possible intended purposes of products when assessing the lawfulness of the use of a trade mark. The criteria for assessing the lawfulness of the use of a trade mark with accessories or spare parts in particular are thus no different from those applicable to other categories of possible intended purposes. 39. Having regard to the above considerations, the answer to the first, second and third questions must be that the lawfulness or otherwise of the use of the trade mark under Article 6(1)(c) of Directive 89/104 depends on whether that use is necessary to indicate the intended purpose of a product. Use of the trade mark by a third party who is not its owner is necessary in order to indicate the intended purpose of a product marketed by that third party where such use in practice constitutes the only means of providing the public with comprehensible and complete information on that intended purpose in order to preserve the undistorted system of competition in the market for that product. It is for the national court to determine whether, in the case in the main proceedings, such use is necessary, taking account of the nature of the public for which the product marketed by the third party in question is intended. Since Article 6(1)(c) of Directive 89/104 makes no distinction between the possible intended purposes of products when assessing the lawfulness of the use of the trade mark, the criteria for assessing the lawfulness of the use of a trade mark with accessories or spare parts in particular are thus no different from those applicable to other categories of possible intended purposes of the products.”
“Members may provide limited exceptions to the rights conferred by a trade mark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trade mark and of third parties.”
“Any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition.” 299.In Gillette the ECJ held as follows: “42. In that regard, use of the trade mark will not comply with honest practices in industrial or commercial matters where, first, it is done in such a manner that it may give the impression that there is a commercial connection between the reseller and the trade mark proprietor (BMW, paragraph 51). 43. Nor may such use affect the value of the trade mark by taking unfair advantage of its distinctive character or repute (BMW, paragraph 52). 44 . In addition, as the United Kingdom Government and the Commission have rightly pointed out in their observations, use of the trade mark will not be in accordance with Article 6(1)(c) of Directive 89/104 if it discredits or denigrates that mark. 45. Finally, where the third party presents its product as an imitation or replica of the product bearing the trade mark of which it is not the owner, such use of that mark does not comply with honest practices within the meaning of Article 6(1)(c). 46. It is for the national court to determine whether, in the case in the main proceedings, the use made of the trade marks owned by Gillette Company has been made in accordance with honest practices, taking account, in particular, of the conditions referred to in paragraphs 42 to 45 of this judgment. In that regard, account should be taken of the overall presentation of the product marketed by the third party, particularly the circumstances in which the mark of which the third party is not the owner is displayed in that presentation, the circumstances in which a distinction is made between that mark and the mark or sign of the third party, and the effort made by that third party to ensure that consumers distinguish its products from those of which it is not the trade mark owner. 47. Concerning the second part of that question, as the United Kingdom Government has rightly pointed out in its observations, the fact that a third party uses a trade mark of which it is not the owner in order to indicate the intended purpose of its product does not necessarily mean that it is presenting that product as being of the same quality as, or having equivalent properties to, those of the product bearing the trade mark. Whether there has been such a presentation depends on the facts of the case, and it is for the referring court to determine whether it has taken place by reference to the circumstances. 48. Moreover, whether the product marketed by the third party has been represented as being of the same quality as, or having equivalent properties to, the product whose trade mark is being used is a factor which the referring court must take into consideration when it verifies that such use is made in accordance with honest practices in industrial or commercial matters. 49. Having regard to the above considerations, the answer to the fourth question must be that the condition of ‘honest use’ within the meaning of Article 6(1)(c) of Directive 89/104, constitutes in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner. Use of the trade mark will not be in accordance with honest practices in industrial and commercial matters if, for example: – it is done in such a manner as to give the impression that there is a commercial connection between the third party and the trade mark owner; – it affects the value of the trade mark by taking unfair 44 . In addition, as the United Kingdom Government and the Commission have rightly pointed out in their observations, use of the trade mark will not be in accordance with Article 6(1)(c) of Directive 89/104 if it discredits or denigrates that mark. Use of the trade mark will not be in accordance with honest practices in industrial and commercial matters if, for example: – it is done in such a manner as to give the impression that there is a commercial connection between the third party and the trade mark owner; – it affects the value of the trade mark by taking unfair –. it entails the discrediting or denigration of that mark; –. or where the third party presents its product as an imitation or replica of the product bearing the trade mark of which it is not the owner.”
“Shelf Life – 1 Year P/N: RBC035-0100 Type: YMCK-K-135 Brand: Datacard Made in USA”
“Toners [inks] for photocopiers are in the alphabetical listing in Class 2, however the inclusion of this item makes it clear that even if the toner is contained in a cartridge it is classified in Class 2. The purpose of the cartridge is to provide the toner and the toner is a Class 2 item. If the cartridge was sold empty, it would be classified in Class 9 since it would then be considered a part of a photocopier or printer, rather than merely a carrier for the ink or toner it contains.” 324.As Ms Roberts explains at p. 93: “Concerning the item ‘ink’, it should be noted that the ink in Class 16 relates only to ink used for writing or used in officerelated printing machines which are usually used to produce low-volume or single copies, such as typewriters (which are classified in Class 16) and computer printers (although this apparatus is classified in class 9). It should be noted that only ink ribbons used in computer printers are in Class 16. Ink toners for computer printers are in Class 2 and the toner cartridge itself, when sold empty, is in Class 9 since it is a part of the computer printer. Inks that are used with machines in the printing industry (which are classified in Class 7) or toners that are used in volume-printing apparatus, such as photocopying apparatus and machines (which are classified in Class 9), are in Class 2. ”