The Court of Appeal has today handed down its judgment in the dispute between Apple and Samsung over the design of three Samsung Galaxy tablet computers. The court unanimously upheld the High Court's decision of 9 July that Samsung's products did not infringe Apple's registered community designs relating to its iPad. Furthermore, Apple is now required to publish the outcome on its website.

The decision marks just one of a number of judgments in the long running global battle between the companies relating to IP rights in the parties' smart phones and tablet computers.

Background

This particular dispute concerning the registered design of Apple's tablet computer began with legal proceedings issued by Apple against Samsung Electronics (UK) Limited (Samsung) in Germany and the Netherlands. In the UK, Samsung sought a declaration of non-infringement in relation to its Galaxy tablet computers. Apple counterclaimed for infringement of its registered community design number 000181607-0001 and the matter proceeded to the High Court. Invalidation proceedings were subsequently brought by Samsung before the Office of Harmonisation for the Internal market (OHIM) in respect of Apple's registered community design.

Apple applied for a stay of Samsung's claim for a declaration of non-infringement and of its own counterclaim in the UK courts pending the outcome of validity proceedings at OHIM but this was not granted. The OHIM proceedings did not require Samsung's claim for a declaration of non-infringement to be stayed and there were special grounds not to stay the infringement counterclaim.

The High Court decision

It fell to the court to ascertain whether the Galaxy tablets produced a different overall impression on the informed user. If it did not, then the design would fall within the scope of protection conferred by Apple's registered community design and amount to an infringement of that right. In assessing the scope of protection, the degree of freedom of the designer in developing his design is taken into consideration. The designs are assessed from the perspective of the informed user who, in this case, was deemed to be a user of hand-held tablet computers.

His Honour Judge Birss QC emphasised the need to consider the visual aspects of Apple's registered community design, the allegedly infringing product and the existing design corpus. On assessment of the similarities and differences and whether the Samsung Galaxy tablet as a whole produced a different overall impression on the informed user from that produced by Apple's design registration, he concluded that it did.

Despite a similar front view giving the impression that the Galaxy belongs to the family which includes the Apple design, differences in the sides and back of the Galaxy including its "thinness" created a different overall impression from the registered design. In terms of design freedom, there was held to be only some as regards ornamentation, the rim and the overall shape. The judge simply stated that Samsung's designs "do not have the same understated and extreme simplicity which is possessed by the Apple design" and they were "not as cool".

Following the decision, Samsung sought an order for publication of a notice on the homepage of Apple's website and in national newspapers stating that its Galaxy tablet did not infringe Apple's community registered design. The order was allowed but its placement was stayed pending the outcome of the Court of Appeal hearing.

The Court of Appeal decision

Today, Lord Justice Longmore, Lord Justice Kitchin and Sir Robin Jacob upheld the decision of HHJ Birss in the High Court. Apple's challenge against an order for publication of the decision on its website and in publications was also refused. However, the precise form of the notice was amended to confirm that Judge Birss' judgment has effect throughout the EU and confirming that there is no injunction in respect of the registered design in force anywhere in Europe.

In the judgment, Sir Robin Jacob reiterated that "the issue is simply whether the accused design is too close to the registered design according to the tests laid down in the law". "It is not about whether Samsung copied Apple's iPad". Ultimately, the court agreed with the findings of the High Court. Sir Robin Jacob concluded that "if the registered design has a scope as wide as Apple contends, it would foreclose much of the market for tablet computers. Alterations in thickness, curvature of the sides, embellishment and so on would not escape its grasp. Legitimate competition by different designs would be stifled".

It is worth noting Sir Robin Jacob's reference in the judgment to a decision of a German court which held that the Galaxy version 7.7 infringed Apple's design and granted a pan-EU injunction against Korean company, Samsung Electronics Co. Limited, from selling it. Apple commenced infringement proceedings in respect of all Samsung's tablets in November 2011 but subsequently withdrew the part concerning alleged infringement of the Apple registered design in February 2012.

Following Judge Birss' High Court decision on 9 July 2012, Apple continued with an appeal in Germany from a refusal in October 2011 to grant a pan-European interim injunction regarding the Galaxy 7.7 device against the Korean company and its German subsidiary. In what may be seen as controversial remarks, Sir Robin Jacob questioned the basis upon which the German court thought it had jurisdiction to grant interim relief namely that, no German court was "first seised".

He did not see any basis for the granting of an interim injunction as the UK court had already granted a final declaration of non-infringement, binding throughout the EU. "It was not for a national court - particularly one not first seised - to interfere with this Community wide jurisdiction and declaration". Apple had undertaken to apply to the German court for that injunction to be withdrawn.

This latest decision of the Court of Appeal highlights the continued relatively narrow scope being given by English courts to design registrations.