The worldwide litigation taking place between technology giants Apple and Samsung has been widely publicised, particularly in the IP world. In Europe, Apple Inc. (Apple) has instigated proceedings against Samsung Electronics (UK) Limited (Samsung), and its subsidiaries, in several jurisdictions, alleging that three of Samsung’s Galaxy tablet computers (versions 7.7, 8.9 and 10.1) infringe Apple’s registered community design (Design) in respect of a tablet computer, registered in 2004.  

HH Judge Birss QC (HHJ Birss), of the UK High Court, handed down a decision on 9 July 2012 declaring that Samsung’s Galaxy tablets did not infringe Apple’s Design. Apple appealed this decision to the Court of Appeal, which in the words of Sir Robin Jacob LJ, sought to “lift the fog” on the cloud of litigation surrounding Samsung’s and Apple’s tablet products.  

High Court decision

Samsung applied to the UK High Court for a declaration of non-infringement, namely that its Galaxy tablets did not infringe Apple’s Design. The legal test for infringement of a registered design is set out in the Community Design Regulation EC 6/2002 (Design Regulation) which states that an infringement occurs when the design “does not produce on the informed user a different overall impression”, taking into account the design freedom of the designer (Article 10). Apple submitted that there were seven similar features between its Design and the Samsung tablets, including, amongst others, “thinness”, “lack of ornamentation” and a “design of extreme simplicity”. Interestingly, Apple’s iPad is not directly based on its registered Design, and the Court of Appeal emphasised the point that the case must be decided as if the iPad had never existed.  

HHJ Birss evaluated the evidence put before him from the perspective of a particularly observant, attentive and interested informed user of tablet devices. He assessed both the existing design corpus, which he took to include a number of handheld computers and computer monitors, and the degree of design freedom involved in the creation of a tablet. After consideration of each of the seven features highlighted by Apple, and the overall impression on an informed user, HHJ Birss found that whilst both designs were from the same family, the thinness and visible additional detail (including the presence of the Samsung trade mark) of the Samsung tablets meant that there was a different overall impression to an informed user. The Samsung tablets were simply “not as cool” as Apple’s design.  

He proceeded to make an order directing Apple to publish a statement outlining the judgment and stating that Samsung had not infringed Apple’s design.

Court of Appeal decision

The next round saw Apple appeal the declaration of non-infringement and challenge the order for publication, criticising in particular the Judge’s treatment of the seven features of similarity. Sir Robin Jacob, who made the leading judgment for the Court of Appeal, found conclusively that HHJ Birss had made no material error in his assessment of the overall impression created by the designs, and added that he too would have reached the same conclusion for the same reasons.  

Apple argued that an informed user would give little significance to the thickness of tablets, and that the Judge was wrong to take into account the Samsung trade marks present on the front and back of the tablets. Sir Robin disagreed with Apple’s arguments, and thought that the Samsung tablets were distinguished by their “thinness with added unusual details on the back. They did not have the “extreme simplicity” which was key to Apple’s Design. He concluded that if Apple’s designs were to have a scope as wide as Apple claimed, then there would be no hope for competitors in the tablet market.  

German injunction

The Court of Appeal went on to confirm that the UK High Court sat not just as a national court, but as a Community designs court pursuant to Articles 80 and 81 of the Design Regulation. As such, the declaration of non-infringement by HHJ Birss is binding throughout the European Community.

Sir Robin Jacob then considered, in light of the above, why a German court granted the pan-European injunction against Samsung’s Korean subsidiary, Samsung Electronics Co., days after the UK judgment, prohibiting it from selling the Samsung Galaxy tablet version 7.7. Sir Robin questioned on what basis the Oberlandesgericht, particularly because it was not “first seized”, thought it could interfere with the Community-wide jurisdiction and declaration of the UK High Court, sitting as a Community designs court.  

The Court of Appeal highlighted that as per Grimme v Scott1, courts in other member states should try to follow the reasoning of an important decision in another country. Most notably, Sir Robin pointed out that “if courts around Europe simply say they do not agree with each other and give inconsistent decisions, Europe will be the poorer” [para. 63].  

Publicity order

The Court of Appeal considered carefully Apple’s challenge to the order for publication of the High Court’s decision. HHJ Birss initially ordered Apple to issue a statement on its website and in certain UK newspapers that Samsung had not copied its designs. This was to stay in place for a period of six months.

Sir Robin gave particular consideration to the current confusion following the German court’s contradictory decision, and to the view of an ordinary consumer who may worry that it is illegal to buy a Samsung tablet. He came to the firm conclusion that such an order was necessary, on the basis that there was commercial uncertainty across Europe as to whether Samsung had copied Apple’s designs. Sir Robin ordered that Apple must go ahead with the publication, and add to it a statement confirming that “There is no injunction in respect of the registered design in force anywhere in Europe”.

Interestingly, in yet another twist, on 25 October 2012 Apple published a statement on its UK website. However, the statement was not in line with the order made by the Court of Appeal, and accordingly led to the parties appearing once again before the Court of Appeal on 1 November 2012 where Samsung claimed that Apple had failed to comply with the original publicity order. In the statement, Apple had referred to positive decisions from other jurisdictions, including the US and Germany, and quoted the infamous “not as cool” comment. Sir Robin, in his judgment of 9 November 2012, found that it was not “open to Apple to add matter in the middle of the notice we ordered to be published” [para. 19]. Apple was given 48 hours to correct the statement following stern words from Sir Robin and has now issued a version that complies with the original order.  

Comment

The Court of Appeal resolutely upheld HHJ Birss’ detailed judgment, and in doing so provided the first substantive Communitywide decision on the Apple and Samsung saga. The attempt by Apple to alter the publicity order only served to highlight that such orders should not be taken lightly by litigants. The UK courts granted the publicity order pursuant to their jurisdiction under section 37(1) of the Senior Courts Act 1981 rather than the EU Enforcement Directive (Enforcement of Intellectual Property Rights Directive 2004/48/EC). The EU Enforcement Directive does not provide for publicity orders where a party has obtained a declaration of noninfringement; rather, it expressly provides for such orders where an IP rights holder has been successful. As a result, this decision by the UK courts may provide a basis for future publicity orders as a discretionary, equitable remedy in other types of litigation case.