Design right – Infringement – Claimant and defendant companies bringing out 'tablet'-style computers
Samsung Electronics (UK) Ltd v Apple Inc: Court of Appeal, Civil Division (Lord Justices Longmore, Kitchin and Sir Robin Jacob): 18 October 2012
The instant hearing arose in the course of proceedings for alleged infringement of design right, brought by the claimant company, in which the claimant sought a declaration that three of its 'Galaxy' tablet computers did not infringe the defendant's design right, Community Registered Design No. 000181607-0001. The defendant, which manufactured the 'iPad' tablet computer, counterclaimed for infringement.
The judge found that the informed user's overall impression of each of the claimant's tablets was that, from the front, they belonged to a family which had included the defendant's design, but the claimant's products were very thin, almost insubstantial members of that family with unusual details on the back. The judge further held that the claimant's tablets did not have the same understated and extreme simplicity which was possessed by the defendant's design, and that the overall impression produced was different.
Accordingly, the judge found that the claimant had not infringed the defendant's design right. The proceedings had attracted publicity, and parallel proceedings were taking place in other countries. Accordingly, the judge made a publicity order, requiring the defendant to publish a notice on its website homepage and throughout the national press to the effect that the claimant's tablets did not infringe the defendant's registered design. The defendant appealed. In the meantime, on 24 July 2012, the German Court of Appeal granted a pan-European interim injunction in respect of one of the claimant's tablets against the claimant's parent company and the parent's German subsidiary.
The defendant submitted, first, that the judge had been wrong in his overall assessment of a different overall impression to the informed user, in that the judge approached the design corpus wrongly and failed properly to consider the designs as a whole. Secondly, if the defendant failed in that submission, given the new material that had not been before the judge at first instance, the court elected to consider de novo the issue of whether a publicity order should be granted to the claimant. Consideration was given to Parliament and Council Directive (EC) 2004/48 (on the enforcement of intellectual property rights) (the Directive). The appeal would be dismissed.
(1) The judge had been entirely aware of the need to consider the overall impression of the design as it would strike the informed user bearing in mind both the design corpus and the extent of design freedom. There had been no material error by the judge in his overall conclusion, arrived at by using his own eyes and taking into account both the design corpus and the extent to which there had been design freedom. If the registered design had a scope as wide as the defendant had contended, it would have foreclosed much of the market for tablet computers. Alterations in thickness, curvature of the sides, embellishment and so on would not have escaped its grasp. Legitimate competition by different designs would have been stifled (see , , , ,  of the judgment).
(2) Publicity orders should normally only be made, in the case of a successful intellectual property owner, where they served one of the two purposes set out in article 27 of the Directive, and in the case of a successful non-infringer, where there was a real need to dispel commercial uncertainty in the marketplace. The Directive did not provide for publicity orders where a party had successfully defended an unjustified claim of infringement or had obtained a declaration of non-infringement. However, there was no doubt that the court had jurisdiction to grant a publicity order in favour of a non-infringer who had been granted a declaration of non-infringement. A declaration was a discretionary, equitable, remedy. Whether or not it was appropriate to grant it depended on all the circumstances of the case, and the test was whether there was the real need to dispel commercial uncertainty (see , , ,  of the judgment).
In the instant case, there had been conflicting reports creating uncertainty and real commercial uncertainty, particularly in light of the decision of the German Court of Appeal. The claimant had finally been successful and had been vindicated on appeal. The defendant was required to make the position clear and acknowledge that the claimant's products had not infringed its registered design (see - of the judgment). Accordingly, the defendant would be required to publish a publicity notice. However, the order would be varied so that the requirement that the defendant publish the notice on its homepage be substituted for a requirement that it provide a link to the notice (see ,  of the judgment).
(3) The judge had been sitting as a Community design court, with the effect that his declaration of non-infringement had been binding throughout the Community. It was not for a national court, particularly one not first seized, in this instance the German Court of Appeal, to have interfered with the Community wide jurisdiction and declaration of the judge. The German Court of Appeal had failed to consider the judge's decision in detail. It had given meagre reasons for interfering and had not followed the principle of uniformity of European patent courts (see - of the judgment). Grimme Maschinenfabrik GmbH & Co KG v Derek Scott (t/a Scotts Potato Machinery)  All ER (D) 153 (Oct) considered.
Per curiam: 'Judge Birss was not sitting as a purely national court. He was sitting as a Community design court... So his declaration of non-infringement was binding throughout the Community. It was not for a national court... particularly one not first seized... to interfere with this Community wide jurisdiction and declaration. The [German Court of Appeal] apparently... thought it had jurisdiction because the party before it was [the claimant's parent company] whereas the party before the English court was [the claimant]. With great respect that is quite unrealistic commercially... [The German Court of Appeal] did not... consider Judge Birss's decision in detail. It gave only meagre reasons for saying "The Court cannot concur with the interpretation of the High Court" ... If courts around Europe simply say they do not agree with each other and give inconsistent decisions, Europe will be the poorer.' (see - of the judgment).
Decision of Judge Birss QC  All ER (D) 139 (Jul) affirmed.
Henry Carr QC and Anna Edwards (instructed by Simmons & Simmons LLP) for the claimant; Lord Grabiner QC, Michael Silverleaf QC and Richard Hacon (instructed by Freshfields Bruckhaus Deringer LLP) for the defendant.