Kaisha v Green Cartridge Company (Hong Kong) Limited: PC 30 Apr 1997

(Hong Kong) The claimants complained of the sale by the defendants of refilled cartridges for use with their printers.
Held: The spare cartridge manufacturer’s appeal failed: ‘repair is by definition something which does not amount to the manufacture of the patented article, it is not an infringement of the monopoly conferred by the patent. It cannot therefore be an unlawful act and needs no special licence to make it lawful, unless as part of a general implied licence to use the patented product at all, which is sometimes used to explain why mere user does not infringe the patentee’s monopoly. But this is perhaps better regarded as a consequence of the exhaustion of the patentee’s rights in respect of the particular article when it is sold. ‘ The British Leyland case which supported the ‘spares exception’ seemed to be a judicial creation to what was a clear statutory monopoly. The extension of such an exception to printer cartridges which were required in order to keep a machine running was too far: ‘once one departs from the case in which the unfairness to the customer and the anticompetitive nature of the monopoly is as plain and obvious as it appeared to the House of Lords in British Leyland, the jurisprudential and economic basis for the doctrine becomes extremely fragile. ‘ and ‘the features of unfairness and abuse of monopoly power which underlay the decision in British Leyland cannot be said to be plainly and obviously present in this case. The analogy with repair is not strong enough to bring the case within the exceptional doctrine which the House of Lords propounded. ‘


Lord Browne-Wilkinson, Lord Lloyd of Berwick, Lord Hoffmann, Lord Hope of Craighead, Lord Hutton


[1997] UKPC 19, [1997] AC 728




CitedBritish Leyland Motor Corporation Ltd v Armstrong Patents Co Ltd HL 1986
The claimant’s product was made from drawings. The drawings were protected as copyright artistic works. They were reproduced in a three dimensional form by the claimant’s own products. Someone who copied the claimant’s products indirectly copied the . .
CitedThomas v Sorrell KBD 1674
The plaintiff said that the defendant had sold wine without paying a license fee as required under a statute creating the Company of Vintners.
Held: Vaughan CJ said: ‘every act a man is naturally enabled to do, is in it self equally good, as . .
CitedLB (Plastics) Ltd v Swish Products Ltd HL 3-Jan-1979
Access and Similarity base proof of Copying
Copyright is intended to protect one person against his work being copied by another. One person must not be permitted to appropriate the result of another’s labour; it is for the plaintiff to establish and prove as a matter of fact that copying has . .
CitedBurke and Margot Burke Ltd v Spicers Dress Designs 1936
. .
CitedSolar Thomson Engineering Co Ltd v Barton CA 1977
The court was asked as to the extent to which a purchaser of a patented article had an implied licence to keep it in repair. Buckley LJ said: ‘The cardinal question must be whether what has been done can fairly be termed a repair, having regard to . .
CitedKing Features Syndicate Inc v O and M Kleeman Ltd HL 1941
The owners of copyright in drawings of ‘Popeye, the Sailor’ sued importers of ‘Popeye’ dolls and other toys. The defendants contended that the copyright in the original work had been lost by the operation of section 22 of the 1911 Act because the . .
CitedKing Features Syndicate Inc v O and M Kleeman Ltd ChD 1940
The plaintiff alleging copyright infringement, had relied on fifty five drawings of the Popeye character out of the many thousands of such drawings in the cartoon series. The defendant might have copied from any one of those thousands.
Held: . .
CitedDorling v Honnor Marine Ltd CA 1964
The court considered the protection of drawings of parts of a boat. The court distinguished between designs capable of registration which were subject to s 10, and designs which were not registrable (chiefly because they were functional) and so bore . .

Cited by:

CitedProfile Software Ltd v Becogent Ltd OHCS 16-Feb-2005
The pursuers claimed for breach of copyright and of a software licence. The defendants disputed the title or right of the pursuers to claim.
Held: The assignation of the rights in the software carried with it the rights to enforce intellectual . .
Lists of cited by and citing cases may be incomplete.

Contract, Intellectual Property

Updated: 01 June 2022; Ref: scu.159230