The High Court has held that Samsung's range of Galaxy tablets did not infringe Apple's Community Registered Design for protecting the appearance of the iPad.
- Samsung's family of Galaxy tablets did not infringe Apple's Community Registered Design (which protects the iPad).
- Following judgment, the High Court made an unusual order that Apple must publish a notice on its UK website and in UK newspapers, summarising the judgment and stating that Samsung had not infringed its design for the iPad.
- Samsung was refused an order to prevent Apple from making public statements about the outcome reached by the Court.
This decision will disappoint designers, particularly in the consumer electronics field. In light of the judgment, it does seem that relatively marginal differences to the design of a product can be enough to prevent infringement of a Registered Community Design. However, the Court did note that the purpose of the systems of registered designs goes beyond combating counterfeiting and the test of "different overall impression" is broader than this.
Nevertheless, the assessment of infringement through the eyes of the "informed user" (i.e. a sophisticated, design-savvy user, as opposed to the less observant "average consumer" in the context of trade marks) and the use of a side by side comparison between the design and the defendant's product are clearly intended to narrow the scope of protection. Designs may be destined to remain the poor relation of patents – at least in the consumer electronics field.
The case concerned the design for the iPad, which was designed by Sir Jonathan Ive and Steve Jobs and protected by a Community Registered Design and three members of Samsung's family of Galaxy tablets (Tab 10.1, Tab 8.9 and Tab 7.7). Samsung sought a declaration of non-infringement and Apple counterclaimed for infringement. Validity was not in issue.
The case was part of a wider war between these two parties over tablets and smart phones in the USA, key jurisdictions in Europe and Australia, featuring both patents and design rights. To date, there have been preliminary proceedings for infringement of the same Community Registered Design in The Netherlands and for both infringement and unfair competition in Germany. Apple did not succeed on infringement in either jurisdiction but was granted an injunction in Germany under its unfair completion claim. In response, Samsung has challenged the validity of the Community Registered Design at the Office of Harmonization for the Internal Market. In this context, the judgment is particularly noteworthy as the first substantive decision on infringement. The Dutch and German courts may yet reach a different conclusion, if and when, they decide on infringement.
HHJ Birss QC, sitting as a judge of the High Court (Patents Court) (rather than in his usual role as the Patents County Court Judge), held that the Galaxy Tab did not infringe Apple's design. The Judge concluded that the Galaxy tablets "do not have the same understated and extreme simplicity which is possessed by the Apple design. They are not as cool. The overall impression produced is different."
The Court's Approach
In his judgment, HHJ Birss QC provided a helpful overview of the state of the law in this field. To assess infringement, the Court must first identify the informed user and the existing design corpus. In general, it will be necessary to separate the design into discrete features for practical reasons rather than trying to assess each design as a whole from the outset. Those features that are solely dictated by function can be discarded. Then, each remaining feature is assessed against the existing design corpus, giving greater protection to features where there is a limited degree of design freedom. The Judge flagged the key point that the scope of protection should be wider where the registered design is markedly different from the existing design corpus and vice versa. The Court will identify the similarities and differences for each feature and attach a weight to them, bearing in mind that things "which look the same because all the products in the class look that way do not excite the informed user’s interest to the same extent as unusual features." Having done this, the Court will consider all of the features together and then answer the key question of whether the defendant's product produces a different overall impression.
On the facts, the informed user was a user of tablet computers. The design corpus comprised 51 different designs stretching as far back as the 1960's "Etch-A-Sketch". Many of these were monitors or flat screens rather than handheld devices. Apple divided the alleged similarities between the design and the Galaxy Tab into seven features, for example (i) "a rectangular, biaxially symmetrical slab with four evenly, slightly rounded corners" or (iii) a "very thin rim of constant width, surrounding and flush with the front transparent surface". Four of these related to the front, two to the back and sides and one was an overall feature. The Court did not over-emphasise the features concerning the front on the basis that a tablet is a handheld device, so the user would pick it up and readily look at the back. The approach may have been different for a PC monitor or a television where the appearance of the back of the product is of reduced importance to the informed user.
The Court held that none of the seven features were "banal or commonplace" within the existing design corpus, but it did find similar designs in the design corpus for every feature. For each feature, design constraints and/or the presence of similar designs in the design corpus explained much of the similarity between the Galaxy Tab and Apple's design.
The Judge's Conclusions
HHJ Birss QC explained that at first he had been struck by the similarity of the Galaxy Tab to the Apple design when he looked at it resting on a table, however, this served to demonstrate the importance of assuming the mantle of the informed user and considering the design corpus. The judge noted the near identity of the front surfaces of the Galaxy Tab and Apple's design, but reduced the weighting of this factor, because there were numerous examples of similar fronts in the existing design corpus. Overall simplicity was the second key similarity, as evidenced by the absence of indicator lights or buttons on the front of the Galaxy Tab or conspicuous switches or fittings on other surfaces. The third key similarity was the "flatness enhancing" effect of the sides.
Of the differences between the designs, two were material: (1) the Apple design is twice as thick as the Galaxy Tab; and (2) there is visible detailing on the back of the Galaxy Tab, which would have appeared unusual to the informed user. The second difference was important because the back of a tablet is an area where there were fewer design constraints and where there was greater variation in the existing design corpus.
Weighing these factors, the Judge concluded that the Galaxy Tab did not have the same "understated and extreme simplicity" of the Apple design and was "not as cool". Thus, the Galaxy Tab produced a different overall impression and did not infringe.
Following the judgment, the Judge ordered Apple to publish a notice on its UK website and in UK newspapers, summarising the judgment and stating that Samsung had not copied its design for the iPad. Normally, the Court would order the infringer to publish such a notice (if it loses on infringement), so making this order was an unusual step. It will be interesting to see if such orders become a standard remedy in other infringement cases. Samsung was denied an injunction to prevent Apple from making public statements expressing that the Galaxy infringed its design rights on the grounds that Apple was entitled to its own opinion. Apple has been granted permission to appeal the judgment.