Samsung Electronics (UK) Limited & Anr

v. Apple Inc.

High Court of Justice, Chancery Division,

[2012] EWHC 1882 (Pat)

Introduction-Entertainment Law? Apple Inc. v. Samsung Electronics Co., Ltd. was the first of a series

of ongoing lawsuits between Apple Inc. and Samsung Electronics regarding the design of smartphones and tablet computers.

Between them, the companies made more than half of smartphones sold worldwide as of July 2012.

By August 2011, Apple and Samsung were litigating 19 ongoing cases in nine countries; by October, the legal disputes expanded to ten countries.

By July 2012, the two companies were still embroiled in more than 50 lawsuits around the globe, with billions of dollars in damages claimed between them.

While Apple won a ruling in its favour in the U.S., Samsung won rulings in South Korea and Japan.

Facts: Samsung motioned a U.K. courts for a declaration that its

Galaxy tablets were not too similar to Apple's products and Apple counterclaimed for infringement,

Samsung prevailed after British Judge Colin Birss ruled Samsung's Galaxy tablet 10.1 was not “cool” enough to be confused with Apple’s ipad.

In July 2012, British judge Birss ordered Apple to publish a disclaimer on Apple's own website and in the media that Samsung did not copy the iPad.

He gave Apple 21 days to appeal the decision. The judge stayed the publishing order, however, until

Apple's appeal is heard in October 2012.

OIHM case pending!

The Law-EU StandardCOUNCIL REGULATION (EC) No 6/2002 of 12

December 2001 on Community designs.

Article 3 defines “design”.

Articles 4, 5 and 6 relate to validity, a design must be new and have individual character.

Article 8 excludes features dictated solely by function.

Art 10 defines the scope of protection in a manner analogous to the definition of individual character in Art 6.

A design will infringe if it does not produce on the informed user a different overall impression.

In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.

Recital 14 explains that overall impression depends on the existing design corpus, the nature of the product, the industrial sector and the degree of freedom of the designer.

Definitions Design Freedom: Design freedom may be constrained by (i) the

technical function of the product or an element thereof, (ii) the need to incorporate features common to such products and/or (iii) economic considerations

Informed User: (i) He is a user of the product in which the design is intended to be

incorporated, not a designer, technical expert, manufacturer or seller.

ii) However, unlike the average consumer of trade mark law, he is particularly observant .

iii) He has knowledge of the design corpus and of the design features normally included in the designs existing in the sector concerned.

(iv) He is interested in the products concerned and shows a relatively high degree of attention when he uses them.

(v) He conducts a direct comparison of the designs in issue unless there are specific circumstances or the devices have certain characteristics which make it impractical or uncommon to do so.

Infringement:How decided?

Design Freedom:A feature

dictated solely by function

is to be disregarded.

ExistingDesign Corpus

Must produce a different

overall Impressionon the ‘informed

User’

Feature wise Differentiation

(i) A rectangular, biaxially symmetrical slab with four evenly, slightly rounded corners:

The rectangular display screen is totally banal and determined solely by function .

In addition there are many designs in the design corpus which can be described as “a rectangular, biaxially symmetrical slab with four evenly, slightly rounded corners”.

Hence the significance of this identity is reduced by the fact that there are other designs in the design corpus which are very similar too.

Contd:(ii) A flat transparent surface without any

ornamentation covering the entire front face of the device up to the rim;

As a practical matter all displays have a border feature of some sort and to that extent design freedom is constrained.

Similar Designs in the corpus

Samsung- very low degree of ornamentation is notable. However a difference is the clearly visible camera hole, speaker grille and the name Samsung on the front face.

I find that the presence of writing on the front of the tablet is a feature which the informed user will notice (as well as the grille and camera hole).

Contd:(iii) A thin profile:

With the Advancement of technology, designers of handheld computers are constrained to make the products relatively thin.

It is clear that using a curve or cut-away between the side edge and the back to enhance the appearance of thinness is an expedient found in the design corpus. It is not banal but it is a common technique.

To my eye the Samsung Tablet is about half the thickness of Apple for the same length or width. This is something the informed user will notice.

The Samsung tablets look very much thinner than the Apple design. That is important to the informed user.

Difference

There are some minor differences but to my eye there are two major differences:

The most important difference between the Samsung Galaxy tablets and the Apple design is the thinness of the Galaxy tablets.

To an informed user, the Galaxy tabs do not merely look like a thin version of the Apple design, they look like a different, thinner design of product.

The next most significant difference is the detailing on the back of each of the tablets.

Ratio

As I have said the significance of the near identity of the front surfaces of these products is reduced to a degree by the existence of similar fronts in the design corpus.

The front view of the Apple design takes its place amongst its kindred prior art.

There is a clear family resemblance between the front of the Apple design and other members of that family (Flatron, Bloomberg 1 and 2, Ozolins, Showbox, Wacom). They are not identical to each other but they form a family.

From the front both the Apple design and the Samsung tablets look like members of the same, pre-existing family.

As a result, the significance of that similarity overall is much reduced and the informed user’s attention to the differences at the back and sides will be enhanced considerably.

Judgement The informed user’s overall impression of each of the

Samsung Galaxy Tablets is the following.

From the front they belong to the family which includes the Apple design: but the Samsung products are very thin members of that family with unusual details on the back.

They do not have the same understated and extreme simplicity which is possessed by the Apple design. They are not as cool. The overall impression produced is different.

The Samsung tablets do not infringe Apple’s registered design No. 000181607-0001.

Thank You

Varun Vaish (2008-74)