Samsung has triumphed over Apple in the UK Court in the latest instalment of Apple and Samsung’s battles over the designs of tablet computers. Apple did not succeed in finding that Samsung’s Galaxy tablets infringe its iPad design, in what was the first full substantive court action in Europe on this matter.
This case concerns Community Registered Design No. 000181607-0001, which is for Apple’s iPad product. In the proceedings, Samsung sought a declaration that three of its Galaxy tablet computers do not infringe Apple’s design, and Apple counterclaimed for infringement.
Previous to this decision, Apple was awarded a preliminary injunction preventing sale of Galaxy tablets in Germany, but failed to obtain a similar preliminary injunction in the Netherlands, with the Netherlands court finding that that the Galaxy tablet did not infringe because the design was not valid. Samsung has also applied to revoke the registration at OHIM in a separate action.
This UK court decision is, however, the first full substantive proceedings (rather than preliminary proceedings) on this matter.
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.
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 Community design, and not by a comparison of the two roducts side-by-side.
The test for infringement is whether the allegedly infringing product produces a different overall impression on the informed user, taking into consideration the nature of the product to which the design is applied, the industrial sector to which it belongs (which form the “the existing design corpus”) and the degree of freedom of the designer in developing the design.
Samsung was seeking a declaration of non-infringement, and Article 84(4) of the Community Designs Regulation states that the validity of a Community design may not be put in issue such actions. Hence, Samsung could not question the validity of Apple’s design in the proceedings before the UK court. However, as the overall impression produced on the informed user by a design depends on the existing design corpus, it was necessary for the Court to consider previous designs when considering infringement, even though validity was not in question.
The judge compared the features of Apple’s design to those of the Samsung tablets. He noted a general similarity, particularly in relation to the front of the tablets and the lack of prominent buttons or indicator lights. He considered the main differences between the Samsung tablets and the Apple design were in the configuration of the back of the tablets, the detail of the side edges, and the thinner impression provided by the sides of Samsung tablets when compared to Apple’s design.
The Judge noted that when he first saw the Samsung products he was struck by how similar they looked to the Apple design when resting on a table. However, once he had considered the existing design corpus, the Judge came to the conclusion that this first impression of similarity was because they both have very similar screens on their fronts, which stands out as a very prominent feature.
The Judge recognised that he did not make his first impression in the position of the informed user, as he was not at that time aware of the extent of the design corpus. He reasoned that the informed user would not apply the same significance to the similarities in the screens, because a number of existing designs in the design corpus had similar fronts to the Apple design. As a result, he considered that the informed user would assess the similarity between Samsung’s Tablets and Apple’s design by looking at the features of Apple’s design that were not present in the existing design corpus, such as the features of the back and sides of Apple’s design.
He reasoned that the informed user would recognise that Apple’s design and the Samsung’s tablets were part of the same pre-existing family of designs in the design corpus, and that within this family of designs the Samsung’s tablets gave a different overall impression to the informed user to Apple’s design, particularly in relation to the back and sides.
As a result, the Judge concluded that Samsung’s Tablets do not infringe Apple’s design.
An important legal implication of this decision is that is reinforces the importance of taking into account the informed user’s knowledge and experience of the design corpus when assessing design infringement. If a design field is crowded or if there are many previous similar designs, then the protection provided by a Community design will be narrower than if the Community design is in a new field.
Although Apple has not been successful this time, this is highly unlikely to be the end of the Apple and Samsung design saga. It is likely that there will be further actions in the future, not least the outcome of the pending validity proceedings at OHIM.