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Is refilling cartridges trademark infringement?

November 30, 2018

Could the recent ruling by the German Federal Supreme Court regarding refilling containers that bear the original manufacturer’s trademark have significant ramifications for refillers and remanufacturers?

As Lexology reports, the German Federal Supreme Court has found that, “in principle, a trademark infringement exists if a refillable container marked with the trademark of the original manufacturer is refilled with goods from another manufacturer and the public understands the trademark on the container as an indication not only of the commercial origin of the container but also of the commercial origin of the contents.”

However, this depends on a number of factors, such as whether or not the consumers carry out the refilling themselves or the contents used to refill the container “bear a mark recognisable to the public”.

While the Court made this ruling in the specific case of the refilling of paper towel containers, it has a broader application, applying to “each and every branded container used in commerce, which can be refilled with third party contents”. Among such items, the court explicitly named printer ink cartridges.

As a result, in order to avoid being embroiled in a trademark infringement case, manufacturers and suppliers of compatible refill products “should therefore at least clearly indicate their different commercial origin by applying its own trademark to the refill materials.”

The court’s ruling could potentially have a significant impact on companies which offer a refilling service, such as Cartridge World, as well as remanufacturers in general, unless precautions are taken.

David Connett, president of ETIRA, commented, “The remanufacturing industry is very aware that when you remanufacture a toner or inkjet cartridge for resale you have to remove the OEM branding and replace it with your own. We all have to respect IP, but it does begin to highlight a potential conflict between established IP and the expanding reuse culture, where IP could be used to unfairly restrict legitimate reuse. I would expect that we will see similar legal actions in other sectors actions.”

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