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Community designs and the design corpus
In a recent case in the ongoing battle between Apple and Samsung, the High Court has provided fresh guidance on assessing the infringement of community designs, and in particular the subject of the ‘existing design corpus’ (or ‘prior art’), and several passing comments which will be of interest to any practitioners involved in design infringement cases.
Samsung Electronics (UK) Ltd v Apple Inc  EWHC 1882 (Pat) concerned Apple’s registered community design for its iPad handheld tablet computer. The design as registered was a line drawing of the product with, as is common for registered designs, views of the product from the front, back, top, bottom and side, as well as a couple of 3D perspective views. It is important to note at this stage that the design protected by this registration concerns only its appearance and not its function.
Samsung launched its latest range of Galaxy Tab handheld tablet computers in the summer and autumn of 2011. Samsung wanted certainty over how hard it could push its products in the market and soon applied to the High Court in England for a declaration of non-infringement. Apple counterclaimed with a claim for infringement.
The test for infringement of community designs is whether or not the later design produces an overall different impression on the informed user. The judgment includes a reminder that the overall impression is concerned with the design as a whole, and that also requires an analysis (but not minute over-analysis) of each of the features which make up the design. Also, the ‘informed user’ is not the same as a designer or manufacturer of the product. Instead, it is the hypothetical person at the end of the line which actually uses the product as it was intended. It is not the ‘average consumer’ known to trademark law; his consideration of the competing designs is more focused and attentive, and takes the time to compare the two side by side.
The European context
In parallel with these proceedings, Samsung also has a pending application to invalidate Apple’s registration at the Office of Harmonisation for the Internal Market - the EU body responsible for community design registrations. Accordingly, the recent judgment does not (and, according to the EU design regulations, could not in the circumstances) address the validity of the registration. The dispute is also the subject of litigation in other countries: in Germany, an interim injunction has been granted in favour of Apple; and in the Netherlands, the courts have found in favour of Samsung on preliminary applications. However, the court here expressly declined to agree with those decisions on a number of issues, particularly as regards the existing design corpus.
The court’s assessment
Putting itself in the place of the informed user, the court undertook a careful assessment of the competing designs, bearing in mind the design corpus which existed at the time of the iPad design, and the technical limitations on the designer’s freedom. Apple had prepared a list of seven similar key features in the appearance of the iPad and Galaxy Tab designs, including a ‘rectangular, biaxially symmetrical slab with four evenly, slightly rounded corners’, a ‘flat transparent surface without any ornamentation covering the entire front face’, a ‘thin profile’ and a ‘design of extreme simplicity without features which specify orientation’.
Samsung had provided a bundle of 51 earlier designs which it said represented the design corpus, as diverse as the ‘Etch A Sketch’, the ‘Bloomberg Terminal’ familiar to many stockbrokers and the ‘LG Flatron’ monitor. The court recognised that some of these did not fall within the same class of goods as the description of the goods provided in the design registration, but it felt that this was irrelevant when considering the design corpus - if something with that appearance exists (regardless of its function), then it may be relevant (see the more recent case of Gimex International v Chill Bag  EWPCC 31 for an assessment of this point by the same judge).
The court was also happy to refer to products shown in published patents, since they included design drawings, notwithstanding the fact the patent document was intended to describe the product’s function. Having reviewed these, the court agreed that Apple’s design was one of extreme simplicity, and it was a ‘cool’ design which the informed user would want to pick up and hold. The court also agreed that there were a number of similarities apparent in the Galaxy Tab design, including the rectangular shape with rounded corners and the biaxial symmetry. However, most of these features fell broadly within the scope of the existing design corpus.
There was a clear family resemblance between the front view of the iPad and earlier designs, and so the scope of protection in that respect was much reduced. On the other hand, the design of the iPad when viewed from the back was not so common, but there were much more stark differences between that and the Galaxy Tab, which had greater detail. The Samsung Galaxy Tab was a simple design, but not as extremely simple as the iPad. It was not as ‘cool’, the court said. Accordingly, while there were similar features, they broadly fell into the category of existing features. Those features of Apple’s community design which were more original and individual did not appear in the Galaxy Tab design. Therefore, there was a different overall impression produced on the informed user, and therefore no infringement.
What it means
This case demonstrates the need for caution in community design infringement cases. Not only is a careful comparison of the competing designs required, but also the existing design corpus. The judge admitted that he was first struck by the obvious similarities between the two designs, but having worked through them as an informed user, he came to realise that the differences were more significant.
On the other hand, the court also sounded a quiet warning for lawyers dealing with community design cases. The court was firmly of the opinion that such cases should be simple. In this case, there were two independent experts, lengthy skeleton arguments and numerous schedules of documents exchanged, although it was found to be acceptable given the significant commercial importance of the matter. That said, it would be advisable for parties to bear this in mind when developing their case.
Jim McDonnell, DLA Piper
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