Claimant submitting defendant failing to comply with publicity notice – Claimant applying for further order

Samsung Electronics (UK) Ltd v Apple Inc: Court of Appeal, Civil Division (Mr Justice Longmore, Kitchin and Sir Robin Jacob): 9 November 2012

The claimant issued proceedings seeking a declaration that it had not infringed the defendant's registered design rights in regard to tablet computers. The proceedings resulted in the defendant unsuccessfully appealing a decision that none of the claimant's tablet computers had infringed the defendant's design (see Samsung Electronics (UK) Ltd v Apple Inc ([2012] All ER (D) 176 (Oct)).

The court held that the defendant had created much uncertainty in the market place. Accordingly, a publicity order was made requiring the defendant to give publicity to the decisions of the Court of Appeal and the first instance judge by way of a notice, inter alia, via its homepage of its website in the UK. The notice had comprised two paragraphs to the effect that the claimant had not infringed the defendant's design rights. The defendant purported to comply with the order and posted a notice on its homepage. However, the notice, whilst containing the two paragraphs required by the publicity order, also contained further statements in regard to the design of the defendant's product and referred to other proceedings.

The claimant applied for a further, clearer and more specific order on the ground that the defendant had failed to comply with the publicity order.

The claimant submitted that the notice as posted by the defendant had been a mixture of the notice as ordered along with material added by the defendant, and it had not been open to the defendant to break up the text as ordered by adding misleading material that undermined the purpose of the publicity order, namely, to clear the uncertainty in the marketplace.

The court ruled: it had not been open to the defendant to add matter in the middle of the notice that had been ordered to be published. A notice with such matter had simply not been the notice ordered. Further, it had not been legitimate to break up the ordered notice with false material, and the added matter had been false. The ordered notice had not precluded any addition to the required notice if that addition had been true and had not undermined the effect of the required notice.

However, the adding of false and misleading material had been illegitimate. It had been calculated to produce huge confusion and had contained false innuendos (see [19]-[24] of the judgment). Accordingly, a further order would be made to the effect that the defendant post the original notice, as ordered, without modification or addition (see [30] of the judgment).

Henry Carr QC and Anna Edwards-Stuart (instructed by Simmons & Simmons) for the claimant; Michael Beloff QC and Richard Hacon (instructed by Freshfields Bruckhaus Deringer) for the defendant.