Samsung Electronics (UK) Ltd v Apple Inc.
| Jurisdiction | England & Wales |
| Judge | His Honour Judge Birss QC |
| Judgment Date | 18 July 2012 |
| Neutral Citation | [2012] EWHC 2049 (Pat) |
| Docket Number | Case No: HC 11 C 03050 |
| Court | Chancery Division (Patents Court) |
| Date | 18 July 2012 |
[2012] EWHC 2049 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
The Rolls Building
7 Rolls Building
Fetter Lane
London EC4A 1NL
His Honour Judge Birss QC
(Sitting as a Judge of the High Court)
Case No: HC 11 C 03050
Miss Kathryn Pickard (instructed by Simmons & Simmons LLP) appeared for the Claimant.
Mr. Richard Hacon (instructed Freshfields Bruckhaus Derringer LLP) appeared for the Defendant.
APPROVED JUDGMENT ON INJUNCTION AND PUBLICATION OF JUDGMENT
In my judgment handed down last week, I decided that Samsung's Galaxy tablets did not infringe Apple's Registered Community Design 000181607-0001 [2012] EWHC 1882 (Pat). I now have to decide two points arising from that judgment. I have already dealt with the question of permission to appeal and an interim award of costs.
First of all, Samsung seek an injunction in the following terms:
(3) The Defendant, by its directors, officers, servants or agents or otherwise howsoever, is restrained from representing to any person that the making and/or offering and/or putting on the market and/or importing and/or exporting and/or using the Claimant's Galaxy Tab 10.1 and Galaxy Tab 8.9 and Galaxy Tab 7.7 tablet computers and/or stocking the Claimant's Galaxy Tab 10.1 and Galaxy Tab 8.9 and Galaxy Tab 7.7 tablet computers for those purposes by the Claimant in the European Union infringes Registered Community Design 000181,607-0001.
Apple resist that injunction.
Samsung also seek an order for dissemination of the judgment in the following terms:
(4) Within seven days of the date of this Order the Defendant shall, at its own expense, (a) post in a font size no small than Arial 14 pt the notice specified in Schedule 1 to this Order on the home pages of its EU websites ("the Defendant's Websites"), as specified in Schedule 1 to this order, together with a hyperlink to the judgment of HHJ Birss QC dated 09 July 2012, said notice and hyperlink to remain displayed on the Defendant's Websites for a period of one year from the date of this Order or until further order of the Court (b) publish in a font size no small than Arial 14 pt the notice specified in Schedule 1 to this Order on a page earlier than page 6 in The Financial Times, the Daily Mail, The Guardian, Mobile Magazine and T3 magazine.
Schedule 1
The following notice shall be posted and displayed upon the Defendant's Websites currently at
[http://www.apple. com/benl/; http://www.apple. com/befr/; http://www.apple. com/bg/; http://www.apple. com/cz/; http://www.apple. com/dk/; http://www.apple. com/de/; http://www.apple. com/ee/; http://www.apple. com/es/; http://www.apple. com/fr/; http://www.apple. com/gr/; http://www.apple. com/hr/; http://www.apple. com/it/; http://www.apple. com/lv/; http://www.apple. com/li/iphone/; http://www.apple. com/lt/; http://www.apple. com/lu/; http://www.apple. com/hu/; http://www.apple. com/mt/; http://www.apple. com/nl/; http://www.apple. com/at/; http://www.apple. com/pl/; http://www.apple. com/pt/; http://www.apple. com/ro/; http://www.apple. com/sk/; http://www.apple. com/si/; http://www.apple. com/fi/; http://www.apple. com/se/; http://www.apple. com/uk/]:
"On 9 th July 2012 the High Court of Justice of England and Wales ruled that Samsung Electronics (UK) Limited's Galaxy Tablet computers, namely the Galaxy Tab 10.1, Tab 8.9 and Tab 7.7 do not infringe Apple's registered design 000181607-0001. A copy of the full judgment of the High Court is available via the following link [insert hyperlink]."
The defendant shall arrange for the following notice to be published in The Financial Times; the Daily Mail; The Guardian; Mobile Magazine; and T3 magazine:
"On 9 th July 2012 the High Court of Justice of England and Wales ruled that Samsung Electronics (UK) Limited's Galaxy Tablet computers, namely the Galaxy Tab 10.1, Tab 8.9 and Tab 7.7 do not infringe Apple's registered design 000181607-0001. A copy of the full judgment of the High Court is available via the following link [insert hyperlink]."
Again, Apple resist that order.
Before me Kathryn Pickard, instructed by Simmons & Simmons appears for Samsung and Mr. Richard Hacon instructed by Freshfields appears for Apple.
First I will deal with the injunction.
In the main action in these proceedings, there was a claim by Samsung for a declaration of non-infringement. There is no dispute that Samsung are entitled to that declaration. In other words, Samsung sought, and have now obtained, a formal public and binding declaration by the High Court that:
"The Samsung Galaxy Tab 10.1, Galaxy Tab 8.9 and Galaxy Tab 7.7 tablet computers (photographs of which are annexed at Annexes 1–3 of this order) do not infringe Registered Community Design number 000181607-0001."
The ability of the court to make such declarations is an important part of the court's armoury of powers to do justice between the parties to a dispute. Sometimes a declaration may be the only remedy sought and the only thing which settles a point of contention between two rivals. Declarations are always discretionary and although it is agreed that I should make one in this case, it is worth recalling that whether to make a declaration depends on taking into account justice to the claimant, justice to the defendant and whether the declaration would serve a useful purpose.
Declarations of non-infringement are well established in intellectual property cases. In the context of Registered Community Designs, it is a recognised remedy (if it is available) under national law. I refer to Article 81(b) of the Community Design Regulation ( Council Regulation (EC) No 6/2002) as follows:
Jurisdiction over infringement and validity
The Community design courts shall have exclusive jurisdiction—
…
(b) for actions for declaration of non-infringement of Community designs, if they are permitted under national law;
…
Similarly Article 91 is also a provision referring to declarations of non-infringement.
The purpose of such a declaration is not simply to decide whether, as in this case, the Samsung products do or do not infringe, it is to make a formal binding and public statement to that effect. However, Samsung submit I should go further and grant an injunction, as Samsung put it, to stop Apple from continuing to make untrue assertions that Samsung's tablet infringes the registered design.
Samsung also point out that after the judgment in this case was handed down Apple said: (I will quote what has been called the Hely statement):
"It's no coincidence that Samsung's latest products look a lot like the iPhone and iPad. This kind of blatant copying is wrong and, as we've said many times before, we need to protect Apple's intellectual property."
Samsung submits that read in context this statement is another assertion by Apple that SEUK's acts in relation to the Samsung tablets constitute an infringe of the registered design. They contend that the fact that the statement was made after judgment indicates the need for an injunction to be granted in order that the court's grant of declaratory relief in this case is not frustrated.
The first question I need to decide is whether I have jurisdiction to make such an order. It is clear that there is no legislative basis in the Community Design Regulation or in the IP Enforcement Directive ( Council Directive 2004/48) for such an order. However, Samsung submit that the court has jurisdiction to make such an order pursuant to section 37(1) of the Senior Courts Act 1981. That is essentially a provision which says that the court may grant injunctions when it is just and convenient to do so.
I think that is sufficient to mean that this court would have jurisdiction to make an order such as the order sought. The real issue, however, is whether I should make an order on the facts of this case.
Mr. Hacon says that I should be extremely cautious to make an order not provided for in Community legislation. I agree that is a factor to take into account, but I do not agree with Mr. Hacon's characterisation that its absence from the legislation necessarily goes as far as to mean that I should be "extremely" cautious. I also do not accept Mr. Hacon's suggestion that it could have effect on trade between Member States. As a generality, that may be relevant, but in this case I seriously doubt it.
Miss Pickard referred me to the decision of the Court of Appeal in Point Solutions Limited v Focus Business Solutions Limited [2007] EWCA Civ 14, in which Chadwick LJ, Hallett LJ and Lindsay J were sitting in the Court of Appeal hearing an appeal from HHJ Kirkham.
In particular Miss Pickard focused on paragraph 34 of the judgment of Chadwick LJ. It seems to me that in that judgment the learned judge was considering that an injunction of the kind sought by Miss Pickard in this case could be appropriate in an appropriate case along with and in addition to a claim for declaratory relief.
Mr. Hacon says that the learned Lord Justice did not focus on the fact that the assertion in that case, which was that there had been copyright infringement, was not itself an unlawful assertion since there is no threats law in copyright. But as I read the judgment, Chadwick LJ saw exactly that point when he was referring to the distinction between the case before him and the statutory threats in a trade mark case.
However, it seems to me that, although Point Solutions provide some support for Miss Pickard's submission, it does not...
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