snIPpets – October 2012
- Purple rain on Nestlé parade
- Translating IP TRANSLATOR
- Lindt's non-traditional chocolate bunny trade mark; devoid of distinctive character
- No 3D mark for chocolate mouse
- U.S. POLO ASSN. confusingly similar to POLO-POLO
- Red Bull: No bully
- Battle of the Tablets
- Alloy Wheels are not "Spare Parts" and infringe BMW's design rights
- Entitlement to damages - In the balance
- The role of post-dated evidence in UK patent litigation
- Virgin Atlantic Airways v Contour Aerospace and others: Which country did you say?
- Amending a granted patent to avoid invalidity
- CJEU rules on cross-border interim relief in patent proceedings
- Patents County Court Court suitable for Goliath v Goliath dispute
Samsung Electronics (UK) Limited v Apple Inc.  EWCA Civ 1339
18 October 2012
The Court of Appeal has confirmed that Samsung's Galaxy tablets do not infringe Apple's Registered Community Design and that Apple should release a publicity statement to that effect.
In our last edition of SnIPpets here, we reported on the first UK ruling in the Samsung/Apple tablet battle and the Court's decision that it did have jurisdiction to hear Samsung's application for a declaration of non-infringement of Apple's Community design registration.
Patents County Courtjudgment
On 18 July 2012, HHJ Birss QC subsequently passed judgment on the merits of the case (one of the first in the global litigation) finding that Samsung's hand-held computer tablet did not infringe Apple’s Community design.
HHJ Birss QC addressed each of the seven features relied upon by Apple, with regard to the extent of the freedom of design that was exercisable at the time, and the overall impression of the Apple design on "the informed user". He then considered the principal common and differentiating features of the two devices' designs, laying emphasis on the devices' design as hand-held objects, to which both the front and back were important.
The judge commented that the Apple design held a "family resemblance" with its "kindred prior art", and concluded that the informed user's impression of the Samsung tablet's general design would be that, from the front, it was very thin and "very very similar" to the Apple design but that it incorporated unusual details on the back.
He also emphasised the "distinctive slimness and sleekness" of Apple's devise, stating that it was an "understated, smooth and simple product" and "a cool design" whereas the Samsung tablet lacked these attributes. It was in this overall impression that HHJ Birss QC concluded that the greatest difference lay and, for this reason, he adjudged that the Samsung tablets did not infringe Apple's design.
The judge, however, declined to issue an injunction forbidding Apple from asserting that Samsung had infringed its registered design on the basis that such an injunction would interfere with Apple’s ability to bring proceedings in other Community courts, and infringe Apple’s right to freedom of speech under Article 10 of the European Convention on Human Rights.
Publication of statements of non-infringement
In a bold and rather unconventional move, HHJ Birss QC also ordered Apple to place statements on its UK website for six months and in certain UK newspapers, to the effect that the Samsung Galaxy tablet did not infringe Apple’s design. The statements should also link to the full Court judgment, a remedy that is specifically noted in The IP Enforcement Directive (2004/48/EC).
Samsung appealed this issue and the Court of Appeal granted a stay of the publication of these statements, pending the substantive appeal on the merits. Kitchin LJ and Jacob LJ considered that the damage to Apple's reputation and goodwill caused by the statements would be difficult or impossible to rebuild, even if Apple were ultimately successful in appealing the decision. Furthermore, as the order for publication of the statements had been widely publicised, and was a cause of some embarrassment to Apple, Jacob LJ considered that the desired effect had already been achieved; there was no further need to uphold the order.
Court of Appeal decision
On 18 October 2012, the Court of Appeal gave judgment in the substantive appeal with Jacob LJ providing the main opinion and Kitchin LJ and Longmore LJ agreeing. The judgment provided a summary of the overall global litigation. The German Oberlandesgericht had granted a pan-European injunction on 24 July 2012, which Apple had subsequently asked to be withdrawn, and the Californian court had not found there to be an infringement of the "design patent" (the equivalent of a design registration). Accordingly, there is now no injunction anywhere in the world based on Apple's registered design or its equivalent.
Overall, Jacob LJ agreed with the ruling of HHJ Birss QC, and endorsed his assessment that the designs created a different overall impression on the informed user. He did not think that Apple had the wider monopoly it claimed over the tablet market. He then criticised the German Court for granting a pan-European injunction after the UK Patents County Court (sitting as a Community design court) had decided there was no infringement.
Perhaps most interestingly, the Court of Appeal reconfirmed that Apple needed to publicise the decision. Given the German injunction and the steps that Apple had taken to enforce it, there was commercial uncertainty about the current situation. Using the Court's inherent jurisdiction rather than powers in the IP Enforcement Directive, Jacob LJ ordered that an expanded publicity statement be made in the press and trade magazines that: "There is no injunction in respect of the registered design in force anywhere in Europe".
The non-infringement ruling now applies across Europe.
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