Samsung Electronics (UK) Ltd v Apple Inc. (No 1)
| Jurisdiction | England & Wales |
| Judge | His Honour Judge Birss QC |
| Judgment Date | 09 July 2012 |
| Neutral Citation | [2012] EWHC 1882 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HC 11 C 03050 |
| Date | 09 July 2012 |
[2012] EWHC 1882 (Pat)
His Honour Judge Birss QC
(Sitting as a Judge of the High Court)
Case No: HC 11 C 03050
IN THE HIGH COURT OF JUSTICE CHANCERY DIVISION
PATENTS COURT
Rolls Building
7 Rolls Buildings
London EC4A 1NL
Henry Carr QC and Kathryn Pickard (instructed by Simmons & Simmons) for the Claimant
Michael Silverleaf QC and Richard Hacon (instructed by Freshfields) for the Defendant
Hearing dates: 18th, 19th June 2012
| Section | Para |
| Introduction | 1 |
| Stay of the infringement case under Art 91? | 18 |
| The witnesses | 25 |
| The law | 30 |
| The approach of Mr Sherman vs the approach of Mr Ball | 60 |
| Assessment | 65 |
| The informed user | 66 |
| The existing design corpus | 67 |
| The German and Dutch decisions | 91 |
| Assessment of the features relied on | 91 |
| 92 |
| 105 |
| 117 |
| 123 |
| 135 |
| 151 |
| 164 |
| Samsung's Schedule B | 176 |
| The overall impression of the Apple design | 178 |
| The overall impressions compared | 183 |
| Conclusion | 191 |
| Annex A – the Apple design |
|
| Annex B – the Samsung tablets |
|
Introduction
This action concerns Community Registered Design No. 000181607–0001. The design belongs to the defendant (Apple). Among the named designers are Sir Jonathan Ive and Steve Jobs. The claimant (Samsung) seeks a declaration that three of its Galaxy tablet computers (the Tab 10.1, Tab 8.9 and Tab 7.7) do not infringe. Apple counterclaims for infringement. One of the matters to be dealt with is whether the counterclaim should be stayed. The validity of the registration is not in issue in this case. Samsung has applied to revoke the registration at OHIM.
Henry Carr QC and Kathryn Pickard appear for Samsung instructed by Simmons & Simmons. Michael Silverleaf QC and Richard Hacon appear for Apple instructed by Freshfields.
Samsung contends that its tablets do not infringe. It submits that when the registered design is understood in its proper context, bearing in mind the existing design corpus and the degree of freedom of the designer, the overall impression the Apple design produces on the informed user is a different one from that produced by any of the three Samsung tablets.
Apple does not agree. It agrees that the registered design must be understood properly bearing in mind the existing design corpus and the degree of freedom of the designer but contends that when that exercise is carried out, the result is that the overall impression produced on the informed user by each Samsung tablet is not a different one from that produced by the registered design.
No witnesses of fact were called. At the case management conference the court directed that the parties may each call an expert to address the issue of degree of freedom and features dictated solely by technical function. Each side did so. Samsung called Mr Itay Sherman and Apple called Mr Alan Ball. Each side cross-examined the other's expert witness at trial. Otherwise the trial consisted of oral submissions. It took two days. Each side submitted that the evidence of the other's expert was addressed to the wrong question. I will address that issue below after I have considered the law.
This dispute is being litigated between the parties in other countries. The validity case is before OHIM. In Germany the first instance court in Düsseldorf held that the Galaxy tablets infringed the design but on appeal the Düsseldorf Court of Appeal decided there was no infringement. However the German court did grant an injunction on the Samsung tablets on a different basis under German unfair competition law. In the Netherlands Apple lost at first instance and on appeal. Both the German and Dutch proceedings are preliminary proceedings. It was not disputed that Apple has the right to start full infringement proceedings in those countries and that the preliminary decisions are not binding. This action is the first substantive hearing in the Community of the issue of infringement.
The Apple design
The various images making up the Apple design are at Annex A.
Apple did not contend that either of its famous iPad products should be used as concrete examples of the Apple design. Neither the original iPad nor the iPad 2 are identical to the design. Whether either of them is or is not within the scope of protection would be a matter of debate. To use either as an example of the Apple design would be to beg the question of the true scope of Apple's rights.
Looking at the Apple design itself, what strikes the eye immediately is its simplicity. The article is unadorned and tile shaped. The large faces are blank with the screen on one side and the back completely blank. Image 0001.3 looks at the article in plan view if it was sitting on a table: the corners are rounded; there is a rim around the whole edge. The transparent surface covers the whole of the front face all the way to the rim. An issue I have to resolve is the significance of the dotted lines visible in images 0001.1 and 0001.3. The side views show that the article is quite thin (images 0001.2, 0001.5, 0001.6, 0001.7) and also show that the edges form a right angle (90°) to the front face but a curve to the back face. Images 0001.6 and 0001.7 show sockets for connectors. They are marked in dotted lines and no issue arises about that marking. This clearly indicates that the design does not include those features.
Samsung submitted that the dotted lines visible in images 0001.1 and 0001.3 also do not form a protected feature in the registration. Part of this submission relied on paragraph 11.4 of the OHIM Examination Guidelines which indicates that dotted lines may be used to indicate elements for which no protection is sought or elements which are not visible in a particular view. Apple submitted that the Guidelines were permissive and not mandatory and that in this case, the dotted lines around the screen would be understood to indicate the presence of a visible border on the screen. The border will be created by a difference in appearance between what lies under the glass on either side of the dotted line.
There is no mandatory rule that dotted lines must be interpreted in a particular way. The Guidelines are not determinative. No doubt in most cases dotted lines will be understood to have been used in accordance with them, but each registration must be understood on its own merits. On the facts of this case I accept Apple's submission. Looking at the two images, the dotted lines would be understood as showing that there is an edge visible under the glass. It is obviously a border around the screen. In cross-examination Mr Ball expressed the view that the registration indicated that the border would only be visible when the screen was switched on but would be invisible when off. I disagree. There is nothing in the images to show that the border is only visible when the product is in a certain state. The border is visible all the time.
The Samsung Tablets
The Samsung Galaxy tablets are at Annex B. They are very thin tile shaped articles. The front face is quite blank. In plan view the corners are rounded, there is a rim around the edge and a border around the screen. The edges of the article are curved, so that they bulge outwards somewhat. The sides have buttons. The back surfaces of the three Samsung tablets differ.
The backs of Galaxy Tabs 10.1 and 8.9 have what Samsung call a clutch purse feature. The backs have two colours. There is a gray/black combination and a gray/white combination. In both cases the gray region forms a rim around the whole back surface and has a thicker part along one side. This thicker part carries the camera. The main part of the back is either black or white as the case may be.
The back of the Galaxy Tab 7.7 has three zones. The zones at the two ends are a smooth silvery gray coloured plastic. The central zone is a silvery gray metal with a rougher texture.
Apart from the backs, the key difference between the various Galaxy tabs is size. The Tab 10.1 is the largest and Tab 7.7 is the smallest. The aspect ratios of length to width of the various Galaxy Tabs are broadly the same. All three are about the same thickness. The Tab 7.7 is the thinnest but only by a small amount.
Features relied on by Apple
Apple submitted that the similarities between the design and the Samsung tablets could be divided into the following seven features:
i) A rectangular, biaxially symmetrical slab with four evenly, slightly rounded corners;
ii) A flat transparent surface without any ornamentation covering the entire front face of the device up to the rim;
iii) A very thin rim of constant width, surrounding and flush with the front transparent surface;
iv) A rectangular display screen surrounded by a plain border of generally constant width centred beneath the transparent surface;
v) A substantially flat rear surface which curves upwards at the sides and comes to meet the front surface at a crisp outer edge;
vi) A thin profile, the impression of which is emphasised...
To continue reading
Request your trial
-
Utopia Tableware Ltd v BBP Marketing Ltd and Another
...to validity. At first instance in Samsung HHJ Birss QC (sitting as a High Court Judge) summarised many relevant principles: see [2012] EWHC 1882 (Pat) at paragraphs [31]-[59]. This summary was not criticised on appeal: see [2013] FSR 9. I will apply these principles, and I will refer to t......
-
Kohler Mira Ltd v Bristan Group Ltd
...... 61 UK unregistered design right ... I set out in paragraphs 33–35 of my judgment in Samsung v Apple [2012] EWHC 1882 (Pat) (sitting in the High ... was to emulate the design of modern consumer electronics businesses such as Apple, Samsung and Sony. He became aware ......
-
Starbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others
...Judgments Regulation, Case C-316/05 Nokia Corp. v Joacim Wardell [2006] ECR I-12083 at [38], and observations of Lloyd LJ in Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 729 at [49]. He then said (at [31]) that EMI relied on the following factors, individually and collectively,......
-
Cartier International AG v British Sky Broadcasting
...the fact that the jurisdiction can be exercised in new ways are confirmed by the recent decision of the Court of Appeal in Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339, [2013] FSR 9. In that case Samsung sued Apple for a declaration of non-infringement of a Community regi......
-
IP Bulletin - November 2012
...the court). The Court of Appeal considered that Apple's conduct warranted such an order. See Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat) for the judgment of 1 November The case serves to illustrate the importance of ensuring that, when applying for an order for a publici......
-
The Tablet Wars
...Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat) In the tablet wars, the High Court has ruled that three designs of Samsung Galaxy tablet computers do not infringe Apple's Community Registered Design. This case illustrates the importance of properly taking into account the informed u......
-
How Cool Is That Design? Community Registered Designs Under The Spotlight
...The source of many of these arguments has been the highly-profitable tablet computer market. In the UK High Court last week in [2012] EWHC 1882 (Pat) His Honour Judge Colin Birss QC made the first substantive finding on the As is well known, Apple, with its iPad products, is the market lead......