The District Court of The Hague, sitting as a Community Design Court, held that a toner cartridge is not a “component part of a complex product”, and in doing so, decided that Samsung’s Registered Community Designs for toner cartridges were valid and infringed by copycat cartridges [see Consolidated cases Samsung Electronics Co Ltd v Maxperian NL BV and Samsung Electronics Co Ltd v Digital Revolution BV, The Hague District Court, 30 November 2016, ECLI:NL:RBDHA:2016:14383, para 4.74]. This judgment should be greatly appreciated by manufacturers of refillable products across the EU, as it suggests that, at least if the litigation can be brought in the Netherlands, there is a good chance that they will benefit from design right protection.

Article 4(2) CDR: Why is this provision here at all?

Article 4(2) of the Community Design Regulation excludes protection for component parts of complex products which are not visible in normal use. This article came about as a balance between the interests of car manufacturers and those of car spare parts manufacturers. Whilst there is a consumer interest in a free market of spare parts keeping prices low, there is also an interest for car manufacturers who have developed the parts that they should be allowed to maintain their business in them. The consequence of Article 4(2) is that component parts that are visible during normal use (eg. windscreen wipers, doors) may be protected by a Community Design Right, but component parts that are not visible during normal use (eg. the engine) are not.

Is a printer a complex product? Is a toner cartridge one of its components?

If a toner cartridge were a component part of a complex product, namely a printer, then it would most likely not be protected by Community Design Rights, as it is not visible during normal use (at least for most printers and cartridges). If it is not a component part of a complex product, however, it can be protected, visible or not, provided it is new and has individual character.

Article 3(c) of the Design Regulation defines a complex product as

a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product.

A printer is clearly itself a complex product: it has many components (for example the paper tray or rollers moving the paper), and each of these could be removed to disassemble, and then put back to re-assemble, the whole printer.

Consumables

But what about the ink cartridge? Is it something that can “be replaced permitting disassembly and re-assembly”? And analogous examples abound: what about game cartridges for games consoles? [see Case R 1772/2012-3 Nintendo, EUIPO Board of Appeal, 14 April 2014]. Or bulbs for lamps, vacuum bags for vacuum cleaners, or rolls of film for cameras? These sorts of products are referred to as “consumables”.

On one argument these are all component parts of complex products, as in order to disassemble these products, it would be necessary to remove the ink or games cartridge, vacuum bag, or roll of film.

Does that make them component parts of a complex product, though?

The prevailing view has been that it does not, although it has been regarded as an open question.

In David Musker’s 2001 book, The Design Directive, CIPA (2001), p  23, he commented on this provision in the then proposed Design Regulation, that in the Explanatory Memorandum, the EU law makers did not intend that the component part of a complex product apply to all complex products, but rather to:

‘costly, long lasting complex products such as motor vehicles’ – something similar to ‘consumer durables’ (again, cars and the like) of the House of Lords in BL v Armstrong. (Citations omitted)

Given that EU law should be interpreted consistent with its purpose, this is strong evidence that the legislature did think of printers and the like as different to cars. For this alone, there is strong reason to believe that, if and when there is a reference to the Court of Justice on this point, it will try to carve out this same exception.

Further, in Catherine Colston and Jonathan Galloway’s Modern Intellectual Property Law, 3d Edition (Routledge, London: 2010), p. 495, the authors have quoted the UK IPO as taking the following position:

[The UKIPO] takes the view that consumables such as toner cartridges for printers are not component parts. While they are replaceable, separate and removable, the product remains a product without them. This would not be true of spark plugs in a car, and spark plugs would be considered component parts of a complex product.

The idea that the printer remains a printer without the toner cartridge is prevalent, and it is informed by our general use of language, for example, if the rollers that allow a printer to take up paper or spark plugs in a car were missing, we would consider the printer and the car to be “broken”, and to need “fixing”. If a printer is lacking a toner cartridge or a lamp a lightbulb, however, we do not consider those objects to be “broken,” merely that we need to change the toner cartridge or bulb.

For yet further justification, one might consider that it would be unthinkable to buy a car and for there to be no spark plugs in it. It is not, however, unthinkable (albeit it may be infuriating) that a printer would not be sold with the toner, or a child’s toy without batteries. In everyday life, we are used to having to buy these things separately, and that is a good indication that we view them as products in and of themselves.

David Stone’s European Union Design Law: A Practitioners’ Guide, 2d Edition (OUP: 2016) p. 77, noted the argument that because we would not normally say that the complex product is “composed of” the consumable, it should not be covered be considered a component of the complex product.  As he also notes, however, at the time of his writing, there had not been any decisions of senior courts concerning this issue: this emphasises the importance of the Samsung decision.

Samsung v Maxperian and Digital Revolution

This is a case between Samsung and two copycat toner cartridges.  Samsung had various patents covering the toner cartridges, but also relied on two Registered Community Designs (RCDs), namely RCD 1200687-0001 and RCD 853551-0001.

RCD 1200687, View 1

RCD 853551, View 1

Amongst other defences, the Defendants argued that the toner cartridges in question were component parts of complex products that were not visible during the normal use. Hence these RCD’s lacked protection under the Community Design Regulation. 

The District Court disagreed (see Consolidated cases Samsung Electronics Co Ltd v Maxperian NL BV and Samsung Electronics Co Ltd v Digital Revolution BV, The Hague District Court, 30 November 2016, para 4.74.):

A printer, as Maxperian et al. has emphasized in their plea, must be regarded as a complex product within the meaning of Article 3 of the EC Regulation on Community Designs. In the opinion of the District Court, however, the cartridge cannot be regarded as part of the printer, because the product, the printer, must still be regarded as a complete product without that cartridge.

This argument is very significant as it is the first senior court to pass on this question, and it has confirmed many of the commentators’ beliefs about what the law should be. The certainty that – at least in the Netherlands – consumables will be protected by design law should be valuable, whether to toner cartridge makers or light bulbs.

Manufacturers or distributors of consumables should be conscious of this decision, whether to assure themselves that they are not infringing, or that their rights are not being infringed.

Written for Class 99 by Paul Tjiam and Hidde Koenraad, Simmons & Simmons LLP