Samsung Make Apple Crumble

The on-going dispute between Apple and Samsung regarding the design of the iPad has received considerable coverage in the national and international press. The cases also teach us valuable lessons about the scope and enforceability of registered design rights.

This article will focus primarily on the situation in the United Kingdom; however proceedings were initially brought in Germany and The Netherlands. The cases are focussed on Apple’s Registered Community Design for its iPad tablet. Representations of the design as registered are below:

Samsung have filed an application at OHIM (the European Community Designs registry) to invalidate this registration, and those proceedings remain on-going.

UK proceedings – High Court

After Apple had commenced proceedings in Germany and the Netherlands for infringement of their registered design, Samsung applied to the High Court in London for a declaration that their Galaxy tablets did not infringe Apple’s iPad design. The key legal test in these, and all of the other proceedings discussed above, was whether Samsung’s Galaxy products created on the informed user a different overall impression from Apple’s iPad design.

The High Court found that the informed user in this case was a user of handheld tablet computers. When making their assessment, the Court considered how free designers of tablet computers are in developing their products, concluding that they all needed a flat transparent screen, and a border, and that rounded corners, whilst not essential, had obvious functional benefits.

The judge (His Honour Judge Birss QC, sitting as Deputy Judge of the High Court) found that there was an amount of design freedom as regards the shape and ornamentation of tablet computers, and concluded that in this case the overall impression was different. He noted in particular that Samsung’s products were considerably thinner than the iPad design, and that this would be noticed by users of tablet computers.

Further, Apple’s design was much more understated and simplistic than Samsung’s, which did not appear to be as ‘cool’. This last comment gained considerable traction in the popular press.

After being granted a declaration of non-infringement, Samsung sought a ‘publication order’, requiring Apple to publish a notice in the national press and on their website stating that the Galaxy tablets did not infringe the iPad design. They argued that Apple’s continued protestation that their design had been infringed, alongside media reports of the corresponding German and Dutch litigation, was causing commercial uncertainty. The judge granted such an order, which was stayed pending Apple’s appeal of his judgement to the Court of Appeal.

Intermission

Between the High Court’s judgement and that of the Court of Appeal, the German courts granted a preliminary injunction preventing Samsung Electronics (UK ) Limited selling its Galaxy Tab 10.1 tablet anywhere in the European Union (except The Netherlands). At the time, the grant of this injunction was widely reported in the British and International press, causing considerable confusion with the UK proceedings. The injunction was later lifted.

UK proceedings –Court of Appeal, part 1

The Court of Appeal upheld the judgement of the High Court, finding that the thinness of Samsung’s product, allied to its more rounded edges and more ornamented back, were sufficient to create a different overall impression on the informed user.

The Court of Appeal also upheld the publication order, amending the required text to include an indication that there was no longer an injunction in force in relation to the Galaxy tablets anywhere in Europe, citing that the publicity created by grant of the injunction in Germany needed to be dispelled.

UK proceedings –Court of Appeal, part 2

Samsung returned to the Court of Appeal in November 2012 protesting that Apple had not satisfactorily complied with the publicity order, as they had interspersed the court-approved text of the notice with discussion of Apple’s success in other jurisdictions.

Apple had also included Judge Birss’s finding that Samsung’s products did not appear to be “as cool” as the iPad. Apple defended themselves by arguing that all of their additions were accurate factual statements.

The Court of Appeal found that the notice did not comply with the intended purpose of dispelling uncertainty, and ordered Apple to publish an unaltered notice.

Conclusion

The cases serve as a potent reminder of the potential strengths of registered design protection, showing that they can be powerful rights and in the right circumstances can provide their owners with a significant competitive edge.

The courts have also demonstrated the limits of protection, illustrating that there is a public interest in designs law not being used to restrict competition. It is notable that the Court of Appeal made it clear that design registrations cover the design as
represented in the application, not future variants.

A Community Design Registration is comparatively inexpensive to acquire (the official filing fees start at €230.) A registration can protect the appearance of the whole or part of a product resulting from eg its lines, contours, colours, shape and texture and of the materials from which it is made, as well as its ornamentation.

No substantive examination is generally carried out. If formal requirements are met, the design is usually registered. Subject to renewal, registrations can remain in force for up to 25 years.

Infringement claims are dealt with by the national courts of the EU member countries. As demonstrated by the Apple v Samsung case in Germany, such courts have the power to grant European Union wide injunctions.