HP ups cease and desist actions

January 16, 2019

HP is now targeting Italian and Spanish companies with cease and desist letters.

Ahead of the upcoming Paperworld / Remanexpo event later this month The Recycler is aware that the OEM has sent cease and desist letters to several cartridge remanufacturers and resellers based in Italy and Spain and follows on from similar actions undertaken in Germany last year. The letters contain a warning that the resellers and remanufacturers will face legal action unless they cease the sale of remanufactured HP inkjet cartridges that infringe the OEM patent rights.

In the European Union (EU) Article 30 of the Treaty of Rome allows the free movement of goods among Member States providing the goods were originally placed on the market by the IP holder (OEM). Resellers and remanufacturers can process and sell such remanufactured inkjet cartridges across the EU because the OEMs patent rights are exhausted. However, this is not the case when importing or remanufacturing non-EU cartridges because the OEMs patent rights are still valid because the cartridges were not first sold on in the EU market.

The IP holder will usually carry out test purchases to validate their claims ahead of issuing the cease and desist letters. The letter is a request to desist from infringing an IP holders rights and usually includes a clause requesting you to pay a contract penalty should you infringe in the future and will also insist on full disclosure, compensation and legal costs. Frankfurt based Seifried IP has published a useful guide (in English) that can help if you have received a cease and desist letter.

One inkjet insider who had received a cease and desist letter last year told The Recycler that “you have to physically check the EU part numbers on each cartridge and it is a good idea to have a clause in your purchase agreements that you will only accept and pay for EU regional cartridges, and you should also have a similar clause in your sales agreements so everyone in your chain is covered.” A list of part numbers is available on the HP website here.

In January 2017 HP began regionalising printers and cartridges to decrease the impact of counterfeiting and at the same time have been issuing regular firmware upgrades that lock our genuine remanufactured cartridges.

Have you received a letter from HP? If so, get in touch and let us know.