Samsung obtain a declaration that their Galaxy tablet computer does not infringe Apple design.

Background

There is worldwide litigation between Apple and Samsung with each party claiming that the other has breached its intellectual property rights. Following actions by Apple against Samsung in The Netherlands and Germany claiming that its Community registered design had been infringed, Samsung counter-attacked in the English courts seeking a declaration of non-infringement. The English courts agreed to consider the declaration proceedings even though there are EU level proceedings taking place in which Samsung are claiming that Apple’s registered design is invalid.

The Action

Community designs are governed by the Community Designs Regulation (6/2002/EC) which broadly provides protection for any design that does not produce on the informed user a “different overall impression”, although there is no protection for features of appearance of a product which are solely dictated by its technical function. In addition, the degree of freedom of the designer in developing his design is taken into consideration in deciding the overall impression.

Apple set out seven features which it claimed meant that its Design and that of the Samsung tablets produced the same overall impression on an informed user. Samsung argued that when the Design was understood in its proper context, bearing in mind the existing design corpus and the degree of freedom of the designer, the overall impression it produced on an informed user was a different one from that produced by its tablets. Samsung also argued that the similarities alleged by Apple were the result of very limited design freedom. Samsung adduced 51 designs which it submitted represented the design corpus as at 24 May 2004. This later proved crucial.

The judge considered the alleged key similarities: the view from the front, the overall simplicity and shape of the Design and Samsung tablets. He then considered the major differences: the thinness and back design of the Samsung tablets.

Decision

The Court determined that:

  • Samsung had not infringed Apple’s Design
  • The issue of infringement began with identifying the “informed user”, in this case a user of hand-held (tablet) computers, and the existing design corpus
  • The informed user was to be considered particularly observant and would conduct a side-by-side comparison of the designs, which was clearly intended to narrow the scope of design protection, so attention to detail mattered
  • The overall impression is something produced on the informed user: this meant breaking the design down into its key features and considering the appropriate significance or weight of each feature against the design corpus and design freedom. A feature dictated solely by function should be disregarded; taking into account the weighted similarities and differences, the court could decide whether the alleged infringing item produced a different overall impression on the informed user from that produced by the registered design
  • Applying this approach, the court decided that fact that the Samsung tablets were much thinner with unusual decorative details on the back would produce a different overall impression on the informed user and therefore they did not infringe the Apple design
  • It is expected that Apple will appeal against the decision

Commentary

In addition to the decision itself, the action is important in that:

  • It is the first substantive decision in the EU regarding Apple’s claim of registered design infringement and may well have an impact on later decisions
  • In view of the preliminary nature of the German and Dutch decisions, the judge did not place any great reliance on them
  • It confirms earlier decisions to the effect that the scope of protection afforded to registered designs is quite narrow due to the concept of the “informed user”
  • In addition to the declaration itself, the court granted Samsung an injunction requiring Apple, for 6 months, to place statements on its UK website and in certain UK newspapers stating that Samsung’s Galaxy tablet had been found not to infringe its Design – this could be a very effective remedy in practice and help to restore confidence in products that have been found to be non-infringing, as well as protecting the reputation of the successful party