Seiko Epson Corporation v Calidad Pty Ltd [2018] FCA 104

Seiko Epson Corporation v Calidad Pty Ltd [2018] FCA 104

The Court declined Calidad's proposed Trade Marks Act declaration because the earlier judgment already made the position clear and Calidad had not sought corresponding declaratory relief in its cross-claim. The patent infringement declaration was limited to conduct prior to April 2016 because the case was conducted on an agreed state of affairs about which product categories were sold and when, and the limitation reflected that infringing conduct ceased after that date. Costs were ordered on an issues basis because Seiko's unsuccessful trade mark, statutory duty and Australian Consumer Law claims were discrete and separable, and a general percentage award would be speculative. Seiko...

Jurisdiction
Australia
Judgment Date
16 February 2018
Procedural Posture
Costs and Declaratory Relief in Intellectual Property Proceeding / Post Judgment Determination of Disputed Orders Following Seiko Epson Corporation V Calidad Pty Ltd [2017] FCA 1403
Outcome
Declaratory and injunctive relief granted for patent infringement prior to April 2016; application otherwise dismissed except for inquiries and costs orders; issues-based costs orders made.
Legal Topics
['form of Declaratory Relief' 'patent Infringement by Modified Printer Cartridges' 'issues Based Costs Orders' 'apportionment of Costs' 'breach of Settlement Deed' 'misleading or Deceptive Conduct']
['intellectual Property' 'patents' 'trade Marks' 'australian Consumer Law' 'costs' 'contract'] ['form of Declaratory Relief' 'patent Infringement by Modified Printer Cartridges' 'issues Based Costs Orders' 'apportionment of Costs' 'breach of Settlement Deed' 'misleading or Deceptive Conduct']

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Procedural Posture

Costs and Declaratory Relief in Intellectual Property Proceeding / Post Judgment Determination of Disputed Orders Following Seiko Epson Corporation V Calidad Pty Ltd [2017] FCA 1403

Legal Issues

  1. 1 ['Whether Calidad should receive a declaration that specified conduct did not fall within sections 145 or 148 of the Trade Marks Act 1995 (Cth).' 'Whether the patent infringement declaration should state that infringement occurred prior to April 2016, but not thereafter.' 'Whether costs should be awarded generally or on an issues-based approach.' "What proportion of Seiko's patent infringement costs Calidad should pay."]

Ratio Decidendi

The Court declined Calidad's proposed Trade Marks Act declaration because the earlier judgment already made the position clear and Calidad had not sought corresponding declaratory relief in its cross-claim. The patent infringement declaration was limited to conduct prior to April 2016 because the case was conducted on an agreed state of affairs about which product categories were sold and when, and the limitation reflected that infringing conduct ceased after that date. Costs were ordered on an issues basis because Seiko's unsuccessful trade mark, statutory duty and Australian Consumer Law claims were discrete and separable, and a general percentage award would be speculative. Seiko...

Court Disposition

Declaratory and injunctive relief granted for patent infringement prior to April 2016; application otherwise dismissed except for inquiries and costs orders; issues-based costs orders made.

Orders

  • ['The Court declared that prior to April 2016, but not thereafter, the Respondents infringed claim 1 of each of Australian Patent Numbers 2009233643 or 20123219239 by selling or offering to sell, importing, or keeping for those purposes printer cartridges within Categories 4, 5, 6, 7 and B identified in Annexure A.'...