Datacard Corporation v Eagle Technologies Ltd
| Jurisdiction | England & Wales |
| Judge | The Hon Mr Justice Arnold,Mr. Justice Arnold |
| Judgment Date | 14 February 2011 |
| Neutral Citation | [2011] EWHC 244 (Pat) |
| Docket Number | Case No: HC09C04263, HC10C0081 |
| Court | Chancery Division (Patents Court) |
| Date | 14 February 2011 |
The Hon Mr Justice Arnold
Case No: HC09C04263, HC10C0081
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
Henry Carr QC and Michael Hicks (instructed by Stephenson Harwood) for the Claimant
Thomas Hinchliffe and Joe Delaney (instructed by CMS Cameron McKenna LLP) for the Defendant
Hearing dates: 17–20, 24–25 January 2011
Approved Judgment
Contents
| Topic | Paragraphs |
| Introduction | 1 |
| The parties | 2–6 |
| Technical Background | 7–25 |
| Printer technologies | 8–18 |
| Radio Frequency Identification ("RFID") technology | |
| The expert witnesses | |
| THE RFID PATENT | |
| The Patent | |
| The claims | |
| The skilled team | |
| The law | |
| The skilled team to whom the RFID Patent is addressed | |
| Common general knowledge | |
| Construction | |
| Integer [1] | 82 |
| Integer [3] | |
| Integer [8] | |
| Infringement | |
| Obviousness | |
| Obviousness over Fargo | 100–118 |
| Fargo | 100–102 |
| Obviousness of claim 11 | 103–118 |
| Obviousness over ENCAD | 119–120 |
| Insufficiency | 121 |
| Added matter | 122–127 |
| The law | 122–123 |
| Claim 11 | 124–127 |
| THE ERROR LOADING PATENT | 128–236 |
| The Patent | 129–142 |
| The claims as proposed to be amended | 143–152 |
| The skilled team | 153 |
| Common general knowledge | 154–161 |
| Construction | 162–165 |
| Infringement | 166–185 |
| Obviousness over Fargo Pro-L | 187–216 |
| Fargo Pro-L | 186–191 |
| Claim 1 | 192–203 |
| Claims 6, 8, 10 and 11 | 204–205 |
| Claims 12, 13 and 14 | 206–213 |
| Claim 19 | 214 |
| Claim 22 | 215–216 |
| Obviousness over Brother | 217–223 |
| Brother | 217–219 |
| Obviousness | 220–223 |
| Obviousness over Sharp | 224 |
| The application to amend | 225–236 |
| Claim 1 | 225 |
| Claims 11,13 and 14 | 226 |
| Claim 11 | 227–233 |
| Claim 13 | 234–235 |
| Claim 14 | 236 |
| THE TRADE MARK CLAIMS | 237–374 |
| The witnesses | 238–240 |
| The Trade Marks | 241–242 |
| The key provisions of the Directive | 243–244 |
| Infringement under Article 5 (1)(a): the law | 245–272 |
| The fourth condition | 247–249 |
| The fifth condition | 250–253 |
| The sixth condition | 254–272 |
| Infringement under Article 5 (1)(b): the law | 273–289 |
| Infringement under Article 5(2): the law | 290–295 |
| The defence under Article 6 (1)(c): the law | 296–299 |
| The average consumer in the present case | 300–304 |
| The reputation of the Trade Marks | 305 |
| The alleged infringements: prior to 26 November 2009 | 306–356 |
| The signs and uses complained of | 306–312 |
| DataCard's case under Article 5(1)(a) | 313–331 |
| DataCard's case under Article 5(1)(b) | 332–338 |
| DataCard's case under Article 5(2) | 339–344 |
| Eagle's defence under Article 6(1)(c) | 345–356 |
| The alleged infringements: 26 November 2009 to February 2010 | 357–367 |
| The signs and uses complained of | 357–358 |
| DataCard's case under Article 5(1)(a) | 359–360 |
| DataCard's case under Article 5(1)(b) | 361–365 |
| DataCard s case under Article 5(2) | 366 |
| Eagle's defence under Article 6(1)(c) | 367 |
| The alleged infringements: February 2010 | 368 |
| The signs and uses complained of | 368–373 |
| DataCard's case under Article 5(1)(a) | 369–370 |
| DataCard's case under Article 5(1)(b) | 371 |
| DataCard's case under Article 5(2) | 372 |
| Eagle's defence under Article 6(1)(c) | 373 |
| The alleged infringements: since February 2010 | 374 |
| Comparative advertising | 375 |
| CONCLUSIONS | 376 |
Introduction
In these actions the Claimant ("DataCard") alleges that the Defendant ("Eagle") has infringed two patents and two registered trade marks owned by Datacard: (i) European Patent (UK) No. 1 458 572 ("the RFID Patent"), (ii) European Patent (UK) No. 1 534 530 ("the Error Loading Patent"), (iii) UK Registered Trade Mark No. 1399698 ("698") and (iv) UK Registered Trade Mark No. 1399699 ("699") (698 and 699 collectively, "the Trade Marks"). Eagle denies infringement and counterclaims for revocation of both the Patents. DataCard has applied to amend the Error Loading Patent, and it proposes to amend the RFID Patent although it has not yet formally applied to do so. There is no challenge to the validity of the Trade Marks. The issues relating to the Patents and those relating to the Trade Marks are entirely distinct.
The parties
DataCard is one of the biggest suppliers in the world of card printers and related products and services, including printer ribbons. Card printers are used to print on plastic cards such as credit cards, ID cards, membership cards, loyalty cards and gift cards. DataCard also supplies printers for printing passports, driving licences and other documents. DataCard's card printers include large, mid-size and desktop models. These actions principally concern the desktop models, which include the SP Plus and CP Plus ranges. In the UK DataCard markets its desktop card printers through six authorised distributors.
DataCard markets its desktop card printers and ribbons under a number of trade marks. Its house mark is DATACARD. This is correctly presented as "DataCard", but is often written as "Datacard" (or sometimes "Data card") by third parties. DataCard uses a variety of product marks in conjunction with this house mark, often with sub-brands as well. Thus one product referred to at trial was the DataCard ImageCard II Plus.
Eagle is a relatively small company that sells card printers manufactured by a range of different manufacturers, including those of DataCard. In addition, Eagle sells printer ribbons and other related products. As well as selling printer ribbons made by the various printer manufacturers, again including Datacard, it also sells compatible printer ribbons i.e. ribbons that work in a particular manufacturer's printer, but are made by someone else. The compatible ribbons sold by Eagle are made in China by a company called Kanon. Previously Eagle obtained compatible ribbons made in the USA by Sony Chemicals.
Eagle markets the printers, ribbons and other products primarily through a large number of resellers. It is also sells directly to end users, however, in particular via its website located at www.eagletechnologies.co.uk. As well as maintaining its own website, Eagle also provides some of its resellers with a "managed website service". By this, it provides its resellers with a version of its website that the reseller can customise and make its own. The core parts of a reseller's website provided under the "managed website service" are the same as Eagle's website.
Eagle markets all its compatible ribbons (i.e. regardless of the manufacturer of the printer) under the trade mark PLUS-RIBBON. This is correctly presented as "plus-ribbon", but is often written as "Plus-Ribbon". Although it uses the trade mark EAGLE on its website and in its marketing materials, it does not use this as a house mark for its compatible ribbons.
Technical background
This case involves two main areas of technology. Printer technologies
There are a number of different types of printer technology. This case principally involves thermal transfer printing. In a monochrome thermal transfer printer, resin from a ribbon is melted onto the surface to be printed by a heated print head. In a colour thermal transfer printer, the dye from a ribbon is diffused into the surface to be printed by the print head. Thermal transfer printing is used in barcode label printers, card printers and photograph printers. It was also used for a time in fax machines before laser printing became affordable.
Thermal transfer ribbons comprise a thin polyester backing coated with dye. In colour printing different areas of the ribbon are coated with panels of different colours: yellow (Y), magenta (M), cyan (C) and black (K). In card printing the ribbon may also be coated with clear protective topcoat (T). Ribbons are quite expensive and so wastage is undesirable.
Thermal printing ribbon needs to be matched to the settings of the thermal print head. This is because differences in chemistry can affect the optimum temperature settings of the print head. Colour ribbons from one manufacturer can produce different colours to ribbons from another manufacturer. This can be compensated for by adjustments in the print driver software which change the temperature settings of the print head.
Card printers typically use a number of different types of ribbon for different purposes. The printer needs to know what type of ribbon has been installed. When printing in colour, it also needs to know where the start of a sequence of panels is on the ribbon.
Another type of printer technology is ink jet printing. In an ink jet printer liquid ink is stored in a cartridge and is sprayed through fine nozzles onto the surface to be printed.
The use of inked ribbons wound on cylinders has been well known in various kinds of printing, including thermal transfer printing, for many years. Typically there are two cylinders (also called rolls and cores). One (called the supply cylinder) carries the unused ribbon. The other (called the take-up cylinder) takes up the ribbon after it has been used for printing. One cylinder may be driven to advance the ribbon (usually the take-up cylinder) or both cylinders may be. A common way to drive the cylinder is by means of ribs on the inside of the cylinder which engage with splines on the outside of spindles or hubs on the printer.
There are three main ways of...
To continue reading
Request your trial
-
(1) British Sky Broadcasting Group Plc (2) British Sky Broadcasting Group Ltd and Others v (1) Digital Satellite Warranty Cover Limted ((in Liquidation)) (2) Nationwide Digital Satellite Warranty Services Ltd ((in Liquidation)) and Others
...practices in industrial or commercial matters." 27 Neither counsel took issue with my analysis of the law on these points in DataCard Corp v Eagle Technologies Ltd [2011] EWHC 244 (Pat), [2011] RPC 17 at [245]-[273] and [296]-[299] respectively (and in relation to Article 6(1) see also my ......
-
Montres Breguet S.A. v Samsung Electronics Company Ltd (a company incorporated in South Korea)
...Case C-62/97 Bayerische Motorenwerke AG v Deenik [1999] 1 CMLR 1099 at [38] (see also Datacard Corporation v Eagle Technologies [2011] RPC 17 (“ Datacard”) at [250]). This can include a situation where a sign is not affixed to goods but a link is established between the sign and the goods, ......
-
Starbucks (HK) Ltd and Others v British Sky Broadcasting Group Plc and Others
...marks in the first place. PCCW's claim for infringement under Article 9(1)(b) The law 118 I reviewed the law at length in DataCard Corp v Eagle Technologies Ltd [2011] EWHC 244 (Pat), [2012] BusLR 160 at [272]-[289] and again more briefly in Red Bull GmbH v Sun Mark Ltd [2012] EHWC 1929 (Ch......
-
Stichting Bdo and Others v BDO Unibank, Inc. and Others
...to infringement under Article 5(1)(b) of the Directive, which corresponds to Article 9(1)(b) of the Regulation, at length in DataCard Corp v Eagle Technologies Ltd [2011] EWHC 244 (Pat), [2012] BusLR 160 at [272]-[289] and again more briefly in Red Bull GmbH v Sun Mark Ltd [2012] EHWC 1929 ......
-
IP Bulletin - March 2011 Edition - Cases From February 2011
...by completing a form on the EPO's website. TRADE MARKS High Court - post-sale confusion Datacard Corporation v Eagle Technologies Ltd [2011] EWHC 244 (Pat), Arnold J, 14 February 2011 In the High Court, Arnold J has held that ECJ case law supports the proposition that post-sale confusion ca......
-
IP Snapshot - March 2011
...of the product (YUMMY DOUGH). For the full text of the decision, click here. PATENTS Datacard Corporation v Eagle Technologies Ltd [2011] EWHC 244 (Pat), 14 February In a double-patent, double-trade mark case before the High Court, Mr Justice Arnold has handed down a judgment revoking both ......
-
Fashion Law Update - May 2021 Edition
...and its products. Post-sale confusion is actionable as a matter of trade mark law (Datacard Corporation v Eagle Technologies Limited [2011] EWHC 244 (Pat)) but is not a commonly pleaded in passing off.The Court struggled to find instances where this question had been considered, and referen......
-
Territorial overlaps in trademark law: the evolving European model.
...are indications that courts might be open to broader notions of actionable confusion. See, e.g., DataCard Corp. v. Eagle Techs. Ltd. [2011] EWHC (Pat) 244 [276]-[289] (Eng.); Och-Ziff Mgmt. Eur. Ltd. v. OCH Capital LLP [2010] EWHC (Ch) 2599 (Eng.); cf. Interflora Inc. v. Marks & Spencer......
-
THE SENSE AND SENSIBILITY IN THE ANTI-DILUTION RIGHT
...and commercial matters”. 48General Motors Corp v Yplon SA[1999] ETMR 122 at [21]. 49DataCard Corporation v Eagle Technologies Ltd[2011] RPC 17 at [291]. 50 This reason was referred to by the Supreme Court in Moseley v V Secret Catalogue Inc537 US 418 at 431 (2003). 51 Note that prior to 199......
-
Intellectual Property Law
...this point. In Och-Ziff Management Europe Ltd v OCH Capital LLP[2011] FSR 11 (‘Och-Ziff’) and DataCard Corp v Eagle Technologies Ltd[2011] RPC 17 (‘DataCard’), the English High Court found a likelihood of confusion on the facts of the case and the claim for infringement succeeded. When the ......