The worldwide litigation between technology giants Apple and Samsung has been widely publicised, particularly in the IP world. In Europe, Apple Inc has initiated proceedings against Samsung Electronics (UK) Limited 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 in respect of a tablet computer registered in 2004.
On July 9 2012 the High Court held that Samsung's Galaxy tablets did not infringe Apple's design. Apple appealed this decision, which, in the words of the Court of Appeal judge, sought to "lift the fog" on the cloud of litigation surrounding Samsung's and Apple's tablet products.
Samsung applied to the High Court for a declaration that its Galaxy tablets did not infringe Apple's design. The legal test for infringement of a registered design is set out in the EU Community Design Regulation (6/2002), which states that an infringement occurs where 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 that of the Samsung tablets, including "thinness", "lack of ornamentation" and a "design of extreme simplicity". Interestingly, Apple's iPad was not directly based on its registered design and the Court of Appeal emphasised that the case must be decided as if the iPad had never existed.
The High Court judge evaluated the evidence 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, the judge found that while both designs were from the same family, the thinness and visible additional detail of the Samsung tablets (including the presence of the Samsung trademark) 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 made an order directing Apple to publish a statement outlining the decision and stating that Samsung had not infringed Apple's design.
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. The Court of Appeal found conclusively that the High Court judge had made no material error in his assessment of the overall impression created by the designs, and added that it 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 trademarks present on the front and back of the tablets. The Court of Appeal 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. The Court of Appeal concluded that if Apple's designs were to have a scope as wide as Apple claimed, there would be no hope for competitors in the tablet market.
The Court of Appeal went on to confirm that the High Court sat not only as a national court, but also as a Community designs court pursuant to Articles 80 and 81 of the Community Design Regulation. As such, the High Court's declaration of non-infringement was binding throughout the European Union.
In light of the above, the Court of Appeal then considered why a German court granted a pan-European injunction against Samsung's Korean subsidiary, Samsung Electronics Co, days after the UK decision which prohibited it from selling the Samsung Galaxy tablet version 7.7. The Court of Appeal questioned the basis on which the German court thought it could interfere with the EU-wide jurisdiction and declaration of the High Court (sitting as a Community designs court), particularly because it was not "first seized".
The Court of Appeal highlighted that according to Grimme v Scott ( EWCA Civ 1110), courts in EU member states should try to follow the reasoning of important decisions in other EU countries. Most notably, the Court of Appeal 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" (Paragraph 63).
The Court of Appeal carefully considered Apple's challenge to the order for publication of the High Court decision. The High Court judge 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.
The Court of Appeal 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. The Court of Appeal ordered Apple to proceed with publication and add to it a statement confirming that "There is no injunction in respect of the registered design in force anywhere in Europe".
In yet another twist, on October 25 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 November 1 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 United States and Germany, and quoted the infamous 'not as cool' comment. The Court of Appeal, in its decision of November 9 2012, found that it was not "open to Apple to add matter in the middle of the notice we ordered to be published" (Paragraph 19). Apple was given 48 hours to correct the statement following stern words from the court and has now issued a version that complies with the original order.
The Court of Appeal resolutely upheld the detailed judgment of the High Court and in doing so provided the first substantive EU decision on the Apple and Samsung saga. Apple's attempt to alter the publicity order served only 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 Enforcement Directive does not provide for publicity orders where a party has obtained a declaration of non-infringement; rather, it expressly provides for such orders where a rights holder has been successful. As a result, this decision of the UK courts may provide a basis for future publicity orders as a discretionary, equitable remedy in other types of litigation.
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