UK: The Tablet Wars

Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat)

In the tablet wars, the High Court has ruled that three designs of Samsung Galaxy tablet computers do not infringe Apple's Community Registered Design. This case illustrates the importance of properly taking into account the informed user's knowledge and experience of what the judge termed the "design corpus". However, the Dusseldorf Higher Regional Court has found in Apple's favour, has upheld an earlier decision and granted an injunction preventing further distribution of one of Samsung's tablets. The tablet designs battle is now set to continue in the US.

The claimant Samsung sought a declaration that three of its Galaxy tablet computers did not infringe Apple's Community Registered Design No 000181607-0001. Apple counterclaimed for infringement. The validity of the design registration was not at issue in the proceedings (the registration is already the subject of revocation proceedings at OHIM).

Samsung argued that its tablets did not infringe Apple's design and that the overall impression the Apple design produced on the informed user was a different one from that produced by any of the three Samsung tablets.

Apple disagreed and argued that the registered design must be understood properly bearing in mind the design corpus and the degree of freedom of the designer but contended that when that exercise is carried out, the result is that the overall impression produced on the informed user by each Samsung tablet is not a different one from that produced by the registered design.

Under Council Regulation (EC) No 6/2002 a design will infringe if it does not produce on the informed user a different overall impression. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration. Overall impression depends on the existing design corpus, the nature of the product, the industrial sector and the degree of freedom of the designer.

HHJ Birss QC commenced his analysis by reminding himself that what really matters is what the court can see with its own eyes, referring to Dyson v Vax [2012] FSR 4 and Procter & Gamble v Reckitt Benckiser [2008] ECDR 3. As to the "informed user", HHJ Birss QC accepted Samsung's summary characterising the informed user ("he ..is a user of the product, ..he is particularly observant.., ..he has knowledge of the design corpus and of the design features normally included in the designs.., ..he is interested in the products..[and] ..shows a high degree of attention.., ..he conducts a direct comparison of the designs in issue.." and, following PepsiCo v Grupo Promer (C-281/10P) [2012] FSR 5, added that the informed user neither (a) merely perceives the designs as a whole and does not analyse details, nor (b) observes in detail minimal differences which may exist.

Considering each of the features relied upon by Apple to be similarities between the Apple design and the Samsung tablets, HHJ Birss QC considered the significance of each against the design freedom and occurrence in the design corpus. Taking these together, he concluded:

"The overall impression of the Apple design

Having gone through the various features individually it is necessary to pull it all together and consider the overall impression of the Apple design on an informed user.

The way the seven features are written, four of them relate to the front of the product, the rear and sides are addressed in two ((v) and (vi)) and the overall position summed up in feature (vii). The front is important but there is a risk of overemphasis. The design is for an object which is hand held and therefore does not simply rest on a desk with its back invisible. The informed user, who is particularly observant, will pick up these objects and will look at the back.

In evidence Apple emphasised the way in which Samsung offered the tablets for sale on the internet, with more views of the front than of the back. I do not regard that evidence as having much to do with this case. The informed user will not simply look at images of these products on websites.

Viewed without the design corpus, the appearance of the front surface of the Apple design would be given significant importance but that significance is reduced by the presence of identical features in the design corpus. The Apple design has a relatively thin profile but not excessively so. If the product was roughly 25cm long (c.f. the Tab 10.1) it would be about 1.5cm thick, comparable to the thickness of a finger.

The extreme simplicity of the Apple design is striking. Overall it has undecorated flat surfaces with a plate of 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 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."; and

"The overall impressions compared

I remind myself that the informed user is particularly observant, shows a relatively high degree of attention and in this case conducts a direct comparison between the products.

To my eye the most important similarities are as follows:

  • The view from the front is really very striking. The Galaxy tablets are not identical to the Apple design but they are very, very similar in this respect. The Samsung tablets use the very same screen, with a flat glass plate out to a very thin rim and a plain border under the glass.
  • Also neither Apple nor Samsung have indicator lights or buttons on the front surface or obvious switches or fittings on the other surfaces. There are some subtle buttons on the edges of the Galaxy tablets but they do not contribute to the overall impression. There is an overall simplicity about the Samsung devices albeit not as extreme as the simplicity of the Apple design.
  • The thinness enhancing effect of the sides creates the same impression. It causes both the Apple design and the Galaxy tablets to appear to float above the surface on which they rest. However the details of the side edges are not the same. The Apple design has a pronounced flat side face which the informed user would see clearly (and feel). It is absent from the Samsung tablets.

There are some minor differences but to my eye there are two major differences. The most important difference between the Samsung Galaxy tablets and the Apple design is the thinness of the Galaxy tablets. The next most significant difference is the detailing on the back of each of the tablets".

And finally:

"Are these two differences enough to overcome the similarity at the front and the similarity in overall shape? Apple submitted that the front face and overall shape are what matters because the informed user will principally spend his time looking at the front face and holding the object in his hand. I do not regard the overall shape as very significant but there is a very obvious visual similarity at the front. In my judgment the key to this case is the strength or significance of that similarity. As I have said the significance of the near identity of the front surfaces of these products is reduced to a degree by the existence of similar fronts in the design corpus. The question is – to what degree?

This case illustrates the importance of properly taking into account the informed user's knowledge and experience of the design corpus. When I first saw the Samsung products in this case I was struck by how similar they look to the Apple design when they are resting on a table. They look similar because they both have the same front screen. It stands out. However to the informed user (which at that stage I was not) these screens do not stand out to anything like the same extent. The front view of the Apple design takes its place amongst its kindred prior art. There is a clear family resemblance between the front of the Apple design and other members of that family (Flatron, Bloomberg 1 and 2, Ozolins, Showbox, Wacom). They are not identical to each other but they form a family. There are differences all over these products but the biggest differences between these various family members are at the back and sides. The user who is particularly observant and is informed about the design corpus reacts to the Apple design by recognising the front view as one of a familiar type. From the front both the Apple design and the Samsung tablets look like members of the same, pre-existing family. As a result, the significance of that similarity overall is much reduced and the informed user's attention to the differences at the back and sides will be enhanced considerably.

The informed user's overall impression of each of the Samsung Galaxy Tablets is the following. From the front they belong to the family which includes the Apple design; but the Samsung products are very thin, almost insubstantial members of that family 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. The overall impression produced is different.

The court ruled on 9 July that the three Samsung tablets did not infringe Apple's registered design.

Following the decision of HHJ Birss QC, on 24 July the Dusseldorf Higher Court has ruled that one of Samsung's tablets (Galaxy 7.7) does infringe Apple's registered design and an injunction has been granted preventing further distribution. The conflicting decisions have given rise to an interesting twist in the tablet wars. The German injunction extends throughout the EU, even to the UK. While the German ruling may not be appealed, it remains to be seen whether Apple will appeal the High Court decision. On the other side of the Atlantic, the tablet wars are currently being fought in the San Jose Federal Court of California (a jury trial commenced on 30 July and the decision is keenly awaited).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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Authors
Charles Russell's Intellectual Property Group
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