UK: Appealing Design: Apple Must Publicise Unsuccessful Case Against Samsung

Last Updated: 25 October 2012
Article by Tom Scourfield and Stuart Helmer

The Court of Appeal has handed down its judgment in relation to the dispute between Samsung and Apple concerning Samsung's tablet computers and a registered Community design owned by Apple.  The Court dismissed Apple's appeal and upheld the first instance High Court judgment.  In doing so, the Court of Appeal has confirmed that Samsung's tablet computers do not infringe Apple's registered design, and that orders requiring a claimant to publicise decisions of non-infringement are a valid remedy within the jurisdiction of the court.  The Court of Appeal also criticised a decision of the German Court of Appeal, the Oberlandesgericht, for producing a decision that conflicted with the High Court judgment, leading to commercial uncertainty.

To view the article in full, please see below:




Full Article

Introduction

In the latest development in the ongoing worldwide IP disputes between Apple Inc ("Apple") and Samsung Electronics ("Samsung"), the Court of Appeal has dismissed Apple's appeal against the High Court judgments of 9 and 18 July 2012, confirming that Samsung's tablet computers do not infringe Apple's registered design.

Background

On 9 July, HHJ Birss held that three Samsung Galaxy tablet computers did not infringe Apple's registered Community design (the "non-infringement judgment").  The court found that Samsung's products did not have the same understated and extreme simplicity – they were simply "not as cool", in the judge's words.  In his second decision of 18 July on applicable relief, HHJ Birss held that Apple was required to publicise this decision on their website and in certain written publications (the "Publicity Order").  Apple applied for the Publicity Order to be suspended pending their substantive appeal of the underlying action.  The stay was granted until the appeal had been decided.

The non-infringement judgment

In determining whether a registered Community design has been infringed, the relevant test is the overall impression the design produces on the "informed user".  Exactly what characteristics should be attributed to the informed user has been considered at length in previous cases, and the parties were for the most part in agreement on this.  However, Apple argued that the presence of the Samsung trade mark on the front and back of the tablets should not have been taken into account in the original decision on whether or not the designs were sufficiently different, as the informed user would disregard the trade mark altogether when viewing the design.  The Court of Appeal rejected this argument, on the basis that Apple themselves had contended that a feature of the registered design was "a flat transparent surface without any ornamentation covering the front face of the device up to the rim."  If a key feature of a design is that is has no ornamentation, then the presence of any ornamentation will affect the aesthetics of a design and should be taken into account.  Similarly, Apple's assertion that another key feature was "a design of extreme simplicity without features which specify orientation" meant that the presence of the trade mark could not be disregarded.

An additional aspect considered by the Court was the edge of the designs.  The Apple design has a 90° sharp edge, while the Samsung products have a slightly curved edge, with no vertical portion.  The Court considered that this constituted a significant difference, which meant the designs could be "members of the same "family" perhaps, but cousins or second cousins at most."

The thickness of the products also came into play, with the fact that the Samsung's tablets were all significantly and noticeably thinner than the registered design being an important factor.  Apple's arguments that the informed user would pay little attention to the thickness of the design were rejected.

In all, the Court held that HHJ Birss had made no material error in his application of the law in the first instance decision.  To interpret the scope of the design as widely as Apple had contended would be to exclude much of the tablet computer market:  "Alterations in thickness, curvature of the sides, embellishment and so on would not escape its grasp.  Legitimate competition by different designs would be stifled."

The Publicity Order

The second aspect of the appeal was against the Publicity Order requiring Apple to post a notice and link to the judgment on its website and in various national newspapers and technology magazines.  Although publication of a court decision in this way is permitted under the Intellectual Property Enforcement Directive, this is usually in cases where a product is held to have infringed.  To require a claimant who had alleged infringement to publicise a finding of non-infringement was an untested interpretation.  The Court granted Apple's swift application to have this order stayed just eight days after the original decision was handed down in July, stating that public humiliation was not the intention behind the decision, and Apple should be permitted to argue its case on appeal before being condemned to this fate.

However, the appeal against the Publicity Order was also dismissed.  The Court considered that granting a publicity order in favour of a non-infringer who had been granted a declaration of non-infringement was within the remit of the law and the court's jurisdiction, although whether or not it should be granted would depend on the circumstances of the case.

The key factor in the Court's decision to uphold the Publicity Order was the need to dispel commercial uncertainty.  This uncertainty had been generated by the plethora of cases worldwide between the two entities, and in particular, a decision of the German Court of Appeal, the Oberlandesgericht, on 24 July 2012 granting a pan-European interim injunction against Samsung in respect of one of its tablet computers.  This was in spite of the fact that just days earlier, HHJ Birss, sitting as a Community design court and considering the same registered design, had already concluded that there had been no infringement.

The Court of Appeal questioned both the reasoning and the jurisdiction of the Oberlandesgericht in reaching such a decision, not just in this case, but also the wider implications this could have on EU law:  "If courts around Europe simply say they do not agree with each other and give inconsistent decisions, Europe will be the poorer."  However, the Court did point out that Apple had undertaken to apply forthwith to the Oberlandesgericht for that injunction to be withdrawn in respect of infringement of the registered design.

The Court considered that the presence of two conflicting decisions that had received significant press attention had resulted in real commercial uncertainty which would affect the ordinary consumer, who may wonder whether purchasing Samsung's products was in fact legal.  The uncertainty created by these previous conflicting reports warranted upholding the order.

Apple did not argue against publishing the notice in the requested newspapers, but it had concerns that displaying such a notice on its homepage would interfere with the design, layout and effectiveness as a marketing tool.  The order was therefore amended so that instead of the full notice having to be displayed on the homepage, a link to the notice would be sufficient.  The link must stay on the website for one month.

Conclusions

In deciding to uphold the Publicity Order, the Court of Appeal has confirmed that publicising decisions of non-infringement is a legitimate remedy.  The effect that such a notice will have on Apple's reputation and sales figures, and whether this will indeed serve to resolve the commercial uncertainty referred to by the Court of Appeal, remains to be seen.

This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq

Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.

The original publication date for this article was 19/10/2012.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.