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ISSUE 1 2014 MASCHIO & SOAMES IP LTD
EUROPEAN LAW RELATING TO PROTECTION OF CONSUMABLES
Anthony James
In a number of industries the bulk of profits come from sales of consumables, not from the initial sale of the equipment. Examples include coffee machines that use single-serve coffee capsules, printers that use ink or toner cartridges, and staple guns or surgical
staplers that use specific staple cartridges.
The model works well for as long as the consumables themselves are patent- protected. The EU competition authorities have repeatedly dismissed complaints
that patent exclusivity on the consumables inherently results in abuse of a dominant position in the after-market contrary to Art. 102 TFEU (Pelikan/Kyocera Case IV/34.330 (1999); Infolab/Ricoh Case IV/E2/36.431; EFIM Case COMP/C-3/39.319). The reasoning in these cases was that the purchaser had a reasonable choice of suppliers of the primary equipment and sufficient information to make an informed assessment of lifetime costs, so no competition objection could be sustained.
It is also established that remanufacturing of patented consumables, e.g. refilling of patented ink cartridges, is an infringing act in Europe and is not saved by the doctrine of exhaustion of rights. In this regard, the European jurisprudence resembles that of
Japan, and differs from the established “first sale” exhaustion of rights doctrine in the USA.
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