Dutch Court confirms a toner cartridge is registrable as a design
Cassandra Hill
10 February 2017

Dutch Court confirms a toner cartridge is registrable as a design

The Hague District Court (sitting as a Community Design Court) has decided that toner cartridges can be protected as Community Designs.  The basis of this decision was that they do not constitute a component part of a complex product i.e. a printer (Samsung Electronics Co Ltd v Maxperian and Others). 

This issue had been open to some doubt and so IT companies that manufacture and sell their own printers and corresponding cartridges will welcome this decision of the Dutch Court, particularly as they compete in the market with 'compatible' cartridges which are often a lot cheaper than their 'original' cartridges.  In order to register the designs of their cartridges, IT companies must demonstrate that the criteria for registration are met, including the requirements of novelty and individual character. 


Samsung had brought proceedings against Maxperian and Digital Revolution for selling 'compatible' printer cartridges through their online stores.  Both Defendants traded in toner cartridges under their house brand which were compatible with several of Samsung's printers and used the product numbers of the corresponding Samsung cartridges to inform consumers of this. Samsung's claim included infringement of two Community Registered Designs (as shown below).

The Defendants argued that the Registered Designs were invalid because the cartridges were a component of a complex product which was not visible during normal use of the printer.  Article 4(2) of the Community Designs Regulation excludes design protection for any component part of a complex product which is not visible during normal use of the complex product.  Given that a cartridge is not normally visible during normal use of a printer, it could not be protected by Community design rights if it was considered to be a component part of a complex product.

The Defendants' argument was that the printer in which the cartridges were placed constituted a complex product.  A complex product is defined in Article 3(c) of the Regulation as a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product.  Therefore, the Defendants argued, the cartridges should be regarded as part of the printer.   However, the Court concluded that a cartridge cannot be regarded as part of the printer because the printer (being the complex product) is still regarded as a complete product without the cartridge – it is possible to buy a printer without an ink/toner cartridge and it would not be considered to be an incomplete product in and of itself (the same as with a coffee machine and the capsules that go inside it). As such, the Article 4(2) exclusion did not apply and Samsung's Registered Designs were valid (and infringed) by the sale of the Defendants' compatible cartridges.