A recent decision of the United Kingdom High Court between Apple Inc. ("Apple") and Samsung Electronics ("Samsung") illustrates the importance of obtaining industrial design registrations.
This case represents one battle in a war based on registered
designs that is being litigated in a number of countries. In this
case, Samsung attacked the validity of Apple's registration
before the Office for Harmonization in the Internal Market (Trade
Marks and Designs). A court in DÃ¼sseldorf, Germany
initially held that Samsung's Galaxy tablets infringed
Apple's design, a decision that was overturned on appeal.
Nevertheless, the German court granted an injunction relating to
Samsung's tablets on grounds related to German unfair
competition law. Apple brought a similar action in the Netherlands,
but lost at first instance and on appeal.
Both the German and Dutch proceedings were preliminary in nature and non-binding, and Apple still has the right to sue for infringement in those countries.
The action in the United Kingdom is related to one of
Apple's registered community designs concerning a version of
its iPad product.
The Apple design is dominated by its simplicity. The article is unadorned and tile shaped. The drawings from the design are reproduced below:
The action was instituted by Samsung who sought a declaration
that three of its Galaxy tablets did not infringe Apple's
The most important things in determining whether design
infringement occurred are the registered design, the object that is
alleged to infringe, and the prior art. When considering these
elements, the most important factor is what each of them
looks like; it is the overall impression that counts and
not a verbalized list of features.
The courts assess designs from the perspective of the "informed user," a concept that has been recently considered by the Courts of Justice of the European Union. An informed user must:
- be a user of the product;
- be particularly observant including having knowledge of prior
registered designs and the design features included in those
- be interested in the products in issue and show a high degree
of attention when they are used;
- conduct a direct comparison of the designs in issue.
While the outcome depends on the overall impression, as a
practical matter, the design must be broken down into its features.
Each feature needs to be considered in order to give it appropriate
significance or weight.
In its U.K. action, Samsung argued that the idea of a tablet computer has existed for a considerable period of time. Samsung also referred to a general tendency for manufacturers to try to ensure that mobile and electronic devices are as small and as light as possible subject to technical considerations.
In a lengthy analysis, the judge considered previously registered designs, including a Canadian industrial design registration, as well as the features of the parties' respective products.
With respect to Apple's product, the judge said that, when viewed without considering the prior art, the appearance of the front surface of the Apple design would be given significant importance. That significance, however, was reduced by the presence of identical features in prior art.
The Court said that extreme simplicity of the Apple design was striking. Overall, the design has undecorated flat surfaces with plate glass on the front all the way out to a very thin rim and a blank back. There is a crisp edge around the rim and a combination of curves, both at the corners and at the sides. The design looks like an object the informed user would want to pick up and hold. It is an understated, smooth and simple product. It is a "cool" design.
The judge said that the informed user's overall impression of each of the Samsung Galaxy tablets was that they belonged to a family that includes the Apple design but the Samsung products are very thin with unusual details on the back. They do not have the same understated and extreme simplicity which is possessed by the Apple design. They are not as "cool".
As a result, the Judge concluded that the overall impression produced by the respective products was different, particularly when one took into consideration the prior art. The Court therefore found that the Samsung tablets did not infringe Apple's registered design.
It seems very likely that this decision will be appealed, so it may be some time before a final decision is arrived at in the U.K or the other countries involved.
It is unfortunate that Apple did not choose to litigate this
issue in Canada. A Canadian decision in this case would be helpful,
as there is little Canadian case law dealing with the current
wording of the Industrial Designs Act. While the
wording of the Act is different from that in the U.K., the general
analysis adopted in this case would also be adopted in
Canada. What remains to be seen is whether a Canadian court
would adopt the same approach in identifying the characteristics of
the informed user.
It is also interesting to see how important it was to Apple to have obtained design registrations.
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