Montres Breguet S.A. v Samsung Electronics Company Ltd (a company incorporated in South Korea)
| Jurisdiction | England & Wales |
| Judge | Mrs Justice Falk |
| Judgment Date | 20 May 2022 |
| Neutral Citation | [2022] EWHC 1127 (Ch) |
| Docket Number | Case No: IL-2019-000011 |
| Court | Chancery Division |
[2022] EWHC 1127 (Ch)
Mrs Justice Falk
Case No: IL-2019-000011
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
Rolls Building, Royal Courts of Justice
Fetter Lane, London, EC4A 1NL
Simon Malynicz QC, Geoffrey Pritchard and Daniel Selmi (instructed by Wilmer Cutler Pickering Hale and Dorr LLP) for the Claimants
Daniel Alexander QC and Ashton Chantrielle (instructed by Allen & Overy LLP) for the Defendants
Hearing dates: 18, 21, 22 & 25 March 2022
JUDGMENT APPROVED
CONTENTS
Paragraph
| Introduction | 1 |
| The evidence | 8 |
| Documentary evidence | 8 |
| The witness evidence | 10 |
| General principles: Article 9 | 28 |
| The marks and signs in issue | 34 |
| The trade marks in issue | 34 |
| The watch face apps in issue, and Swatch's claim | 35 |
| Samsung smartwatches | 39 |
| Samsung smartwatches: function and design | 39 |
| The SGA store | 48 |
| Samsung's arrangements with app developers | 55 |
| The app review process | 58 |
| The CRG | 66 |
| Notice and take down process | 70 |
| Accessing apps from the SGA store | 71 |
| Infringement | 74 |
| The average consumer | 75 |
| Use | 84 |
| Identity and similarity of marks and signs | 111 |
| Identity and similarity of goods and services | 119 |
| Use “in relation to” | 136 |
| Function and descriptive use | 147 |
| Likelihood of confusion | 156 |
| Article 9(2)(c): unfair advantage etc | 166 |
| Joint tortfeasorship and Article 10(3) | 196 |
| e-Commerce Directive defence | 197 |
| The European case law | 203 |
| Samsung's case on Article 14 | 211 |
| Discussion | 216 |
| Conclusions | 230 |
| Appendix 1: The trade marks in issue | |
| Appendix 2: The apps in issue | |
| Appendix 3: Conclusions on individual marks and signs |
INTRODUCTION
This is my decision following a liability trial of a claim for trade mark infringement brought by the claimant watch makers against the Samsung Electronics group. The claim relates to digital watch faces (watch face applications, or “apps”) that could be downloaded to Samsung's smartwatches from the Samsung Galaxy App store (the “SGA store”).
The Claimants are all members of the Swatch group of watch makers. I shall refer to the Claimants collectively as “Swatch”, and the group of which they are members as the “Swatch group”. All of them are incorporated and based in Switzerland, with the exception of the Tenth Claimant which is incorporated in Germany. Each has a distinct brand and associated trade marks, ranging from Swatch in the “basic range” (with prices below CHF 200), Tissot, Mido and Hamilton in the “middle range” (between CHF 300 to 1,000), Longines in the “high range” (CHF 1,000 to 5,000), Omega in the “luxury range” (CHF 3,000 to 10,000) and Breguet, Blancpain, Glashütte Original and Jaquet Droz in the most exclusive “prestige range”, with some prices of those watches running into hundreds of thousands of Swiss francs, or even more. Members of the Swatch group also own other brands, namely Harry Winston, Union, Rado, Certina, Balmain and Flik Flak.
The First Defendant, Samsung Electronics Co. Ltd (“Samsung”), is incorporated in South Korea and is the parent entity of the well-known technology group. The claim against the Second Defendant, a UK subsidiary, was stayed, so Samsung is the only active defendant.
Swatch claim that between October 2015 and February 2019 a total of 23 of their trade marks were infringed by 30 watch face apps being made available in the SGA store, and that those apps were admitted by Samsung to have been downloaded around 160,000 times in the UK and EU. Although each of the apps was developed by a third party (the “app developers”), Swatch maintain that Samsung was intimately involved in, and controlled, the whole process by which the apps were made available. Their primary case is that Samsung is liable as a primary tortfeasor, alternatively that it is a joint tortfeasor. An alternative claim for passing off, covering a further six apps as well, was not pursued at the trial, and claims for infringement of two additional trade marks with international registrations were also not pursued.
Samsung denies liability. Its defences include that it has not used the marks, that the signs on the apps were not used in a way that indicated that there was any connection with Swatch, and that the conditions for joint liability were not established. Further, it relied on Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 (the “e-Commerce Directive”).
It will be necessary to refer at various points in this judgment to the appearance of trade marks or signs on watch faces. There was no dispute that the conventional location of a trade mark on a watch, whether in word or figurative form or both, is generally the centre of the upper portion of the dial. For convenience, I will use the term “Dial Branding” to refer to the appearance of the mark or sign on the watch face.
I would like to thank Counsel and other members of the respective legal teams for their assistance and co-operation, including in providing further written submissions in response to questions from the court arising out of the pleadings in respect of individual apps, and in agreeing the contents of Appendices 1 and 2 to this judgment. I do need to add, however, that because of the way in which the case was presented the court was required to do a significant amount of work to produce those Appendices, despite their content being uncontroversial. I would recommend that, in future, greater consideration is given in advance to what would best assist the court to determine the issues in the case, which in this case included disputes about each app.
THE EVIDENCE
Documentary evidence
Apart from some evidence of the alleged infringements, documentary evidence provided by Swatch principally comprised documents provided under a Civil Evidence Act notice evidencing the background and history of the individual Claimants, material on the luxury watch market and the Swatch group's place in it, Samsung smartwatch promotional material, and video extracts from Samsung developer conferences in 2018 and 2020.
Samsung's documentary evidence included material relating to the smartwatch, Samsung's review process, terms and conditions for app developers, download and sales data and, under a Civil Evidence Act notice, evidence in respect of Apple's app review process, Apple and Google's infringement report processes, Samsung's infringement report process, potentially infringing apps shown on the Apple app store and Google Play, and the full version of the watch designer tool presentation at the 2018 Samsung developer conference.
The witness evidence
I heard oral evidence from three witnesses for each party. There was no expert evidence. Swatch's witnesses were Carole Aubert, Peter Steiger and Sylvain Dolla. Samsung's witnesses were Loi Le, Younggu Kim and Taegu Lee. Mr Le gave evidence through a Vietnamese interpreter and Mr Kim and Mr Lee through a Korean interpreter. All witnesses gave evidence in person, other than Mr Le who gave evidence by videolink from Hanoi. There were no issues with the credibility of any of the witnesses.
Carole Aubert
Ms Aubert is an in-house counsel at the Swatch group, where she is largely concerned with brand protection and has particular responsibility for online infringement. Before joining the group in July 2018 she worked for the Federation of the Swiss Watch Industry for 13 years as head of its internet unit, overseeing online enforcement on behalf of members. She also worked during part of that period as a partner in a law firm.
Ms Aubert's written evidence assisted in providing some context and background to the Swatch group's approach to brand protection and this claim. I found her oral evidence in cross-examination to be somewhat general and of less assistance to the issues in the case. To some extent this was a reflection of her role in the group, although she appeared also to be less familiar with the details of the litigation than might have been expected.
One theme of Ms Aubert's cross-examination was the fact that Swatch had neither chosen to sue the app developers, nor had it taken legal action against other watch face app providers, including a relatively well known one called Svartling. A point was also taken about an apparent delay between Samsung providing evidence identifying an apparently infringing app in the Apple store and Swatch taking steps to get it taken down.
These points do not affect the question whether Samsung is liable. Fundamentally, it is up to the Swatch group to determine what if any legal action it should take and against whom, as opposed to relying solely on “notice and take down” procedures (see [70] below). It is understandable that the group takes a selective approach. As Ms Aubert said in her written evidence, its resources are not infinite. It is clear from Ms Aubert's evidence that Swatch's decision to bring proceedings against Samsung was at least partly prompted by a perception that Samsung...
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...that can be used with the various branded technology. The recent case of Montres Breguet SA & Ors v Samsung Electronics Co. Ltd [2022] EWHC 1127 (Ch) (20 May 2022) (bailii.org) may help shed some light on this, as well offering an insight into the world of protecting IPRs across multiple Th......