Community Designs: Apple v Samsung

This article was included in our Autumn/Winter 2011 edition of Inside IP magazine.

Summary
On 9 September 2011, a German court upheld its preliminary injunction against Samsung preventing sales of the Samsung Galaxy Tab (tablet computer) in Germany, on the basis that this product is an infringement of a registered Community design for the Apple iPad. The case now proceeds to a full hearing, although Samsung has additional legal options available to it, such as an appeal to a higher court.

This article sets out the main issues that arise in this case.

The Law
A registered Community design is an intellectual property right which potentially gives 25 years of protection throughout the European Union for the design of a product. It is an entirely separate right from patents and trade marks.

It is intended to protect some aspect of the (external) appearance of a product.

It is relatively inexpensive to apply for and is not subject to a substantive examination procedure before being registered.  As this ongoing case shows, Community designs potentially provide a very powerful right to prevent the sale of allegedly “look-alike” products.

Infringement of a Community Design is judged by reference to the representations of the article as registered, not to the product itself. In other words, infringement is judged by comparing the allegedly infringing product to the registered design, and not by a comparison of the two products side-by-side.

A Brief History of the Dispute
Apple applied for an injunction in Germany to prevent sales of the Galaxy Tab in early August 2011. It would appear that the timing was intended to coincide with a major upcoming German electronics trade fair.

Initially, on 9 August 2011, the German court imposed a Europe-wide injunction, which in appropriate circumstances it is entitled to do since the Community design, like the Community trade mark (but unlike European patents) is a unitary right which is valid throughout the European Union.

However, following representations from Samsung, the court narrowed the scope of the injunction to Germany only, since it was unclear whether the court did in fact have jurisdiction to order a Europe wide injunction against a company (the Korean parent company) which was not domiciled in Germany.

In its final decision made on 9 September, the injunction in respect of Germany was maintained.

It appears that the judge considered validity as well as infringement, and concluded that the minimalist style of the iPad design was worthy of design protection and sufficiently different from prior art designs.

Corresponding Dutch Decision
A court in the Netherlands had earlier been asked to rule on infringement of the same Community design, but in direct contrast to the German court, found that the Galaxy Tab does not infringe because the design was not valid. It appears that the Dutch court found that the iPad registration was too generic to be worthy of protection.

These conflicting rulings from German and Dutch courts show that even a unitary right such as a Community design can be the subject of different findings by different courts. It seems that the German court was even aware of the previous decision, but nevertheless chose to reach a different conclusion.

Conclusion
In many technical fields, Community design rights have up to now been considered less important than patents that protect the underlying technology. However, this case makes it clear that Community designs can be a powerful weapon by themselves and should be considered, potentially in addition to patents, in fields where the final look of the product is important, as it is for so many modern technological products.

07 Nov 2011

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