Samsung v Apple: not as cool but (still) not infringing

The Court of Appeal was tasked with the job of determining whether Judge Birss QC (sitting as a Deputy Judge of the Patents Court) had erred in holding that three of Samsung’s tablet computers (its Galaxy Tabs 10.1, 8.9 and 7.7) did not infringe Apple’s Registered Community Design 000181607-0001.

Upholding the decision of the High Court, the judges agreed that no material error had been made by Judge Birss QC, reasoning as follows.

Firstly, the Court of Appeal determined that if the scope of protection to be afforded to Apple’s Registered Community Design was as broad as Apple argued, this would (in many respects) “stifle legitimate competition”. Going further, the Court dismissed Apple’s contention that the “informed user” would pay little attention to the purportedly small differences in thickness between the designs under comparison (Apple arguing that an “informed user” would expect technological advances to lead to thinner tablet computers). On this point, the Court observed that (consistent with the aim of the Community Design Regulation) Apple’s registered design protects the product “as it is” and does not protect some future (even if foreseeable) change in the design of such products. As a result, such differences were held to be relevant when determining whether or not the later design produces a different “overall impression” on the “informed user”.

Separately, the Court also held that Samsung’s decision to place its SAMSUNG trade mark on the front of its tablets was important as this represents a departure from Apple’s registered design which is said to be “overall, a design of extreme simplicity without features which specify orientation” (the characteristics which Judge Birss previously considered to be “cool”).

A further observation made by the Court was that, with regard to the degree of the designer’s freedom, this is limited in relation to “the appearance of the front and rather more the back” of a tablet computer. On this basis, the High Court’s conclusion on the same point was determined to be correct. Considered altogether, the overall impression created by the Apple design on an “informed user” was said to be different.

Perhaps of more legal interest though is the Court’s criticism of the conflicting German decision of 24 July 2012 which was handed down by the Oberlandesgericht (German Court of Appeal). There, the German court concluded that the Galaxy Tab 7.7 infringed Apple’s same registered design and a pan-EU injunction should be granted against Samsung Electronics Co. (the Korean parent company). An interim injunction was already in place against Samsung’s German subsidiary, whilst the UK decision concerns Samsung’s UK subsidiary only.

Sir Robin Jacob considered that the German court did not have jurisdiction to grant interim relief for the following reasons:

1. the German Court was not “first seized” of the declaration of non-infringement claim, not least because Apple had withdrawn its claim for infringement on the merits in Germany and because declarations of non-infringement had been commenced on the same day in September 2011 in a number of EU countries;
2. the UK Court had already granted a final decision on non-infringement in respect of the Samsung tablets (and was sitting as a Community Design Court), there was therefore no basis upon which to grant an interim injunction;
3. the German Court rather artificially considered Samsung Electronics Co. to be a different entity to Samsung’s UK subsidiary whereas, in reality, they are all one “undertaking” (with the result that the UK decision was binding);
4. on the legal merits, the German Court did not properly consider the relevance of the presence of Samsung’s trade mark on its tablet products; and
5. the German Court did not give proper weight to Judge Birss’ decision, providing only “meagre” reasons for being unable to concur with the decision of the High Court.

Having lost its appeal, Apple must now publicise its defeat by providing a link to the Court’s judgment from the homepage of its website for a period of one month.

The decision of the Court of Appeal and the tactics used by both Apple and Samsung in this case has been particularly interesting. It has highlighted the inconsistencies which still exist within the scheme of the Community Design Regulation given that enforcement is on a national basis rather than via a unified court. National courts have different procedures and some of them are more claimant-friendly than others. In the view of Sir Robin Jacob, European courts must listen to each other and, in the event of disagreement, provide full and proper explanations as to why they wish to depart from a contrary decision. His comment (as mentioned in 3 above) that a parent company and its subsidiaries are “one undertaking” is potentially far-reaching and could lead to more forum shopping and races to (early) judgment. Whilst his comment may be legally questionable, we do see some logic in the argument that a final decision of a Community Court on the merits that a particular product did not infringe an RCD should be of binding effect so far as those products are concerned no matter who sells them or indeed where