In July 2012, in the first substantive decision in the ongoing litigation between Apple and Samsung, the UK Courts ruled that certain of Samsung's Galaxy Tab tablet computers do not infringe Apple's registered design right (Community Design 00181607-001).
Apple has brought a large number of actions against Samsung throughout Europe and the US, alleging infringement of various patents and design rights. In Europe, Apple has sought preliminary injunctions to prevent Samsung selling various of their Galaxy Tab tablet computers. They were unsuccessful in obtaining an injunction in the Netherlands, but in August 2012 they did so in Germany.
In the UK, Samsung sought a declaration for non-infringement, specifically in relation to their Tab 10.1, Tab 8.9 and Tab 7.7 products.
In order to infringe a registered design right, a product must produce the same overall impression on the informed user (the informed user being someone who is reasonably informed about that field and about design rights in general). When assessing whether a product produces the same overall impression, design freedom will be taken into account (ie where there is little freedom in design, a smaller difference will be sufficient to establish a different overall impression). In addition, as a design must be novel to be valid, the existence of prior art which is very similar to the registered design will reduce the scope of protection.
Apple claimed that seven main features of their registered design were reproduced in Samsung's products. Judge Colin Birss considered each of these features, and his comments are summarised below:
1. A rectangular, biaxially symmetrical slab with four evenly, slightly rounded corners.
2. A flat transparent surface without any ornamentation covering the entire front face of the device up to the rim.
3. A very thin rim of constant width, surrounding and flush with the front transparent surface.
In each of 1-3, the design constraints inherent in the feature do not account for the similarity between the Samsung product and the Apple design. However, the significance of the similarity between these features is diluted by the fact that there are other, very similar designs, which were previously known.
4. A rectangular display screen surrounded by a plain border of generally constant width centred beneath the transparent surface.
Again, design freedom is somewhat constrained in this feature, and the existence of previously known, similar designs means that the significance of this similarity is reduced.
5. A substantially flat rear surface which curves upwards at the sides and comes to meet the front surface at a crisp outer edge.
Apart from the constraint that the back needs to be generally flat, there is considerable design freedom in this aspect of the product. The informed user would recognize both products as coming from the same familiar class of products with curved sides and a fairly crisp edge.
6. A thin profile, the impression of which is emphasised by 5. above.
The Samsung tablets are thinner than the Apple design. However, although the thinness-enhancing edge effect is known from the prior art, it is not used in products having similar front views to the Apple product.
7. Overall, a design of extreme simplicity without features which specify orientation.
The Samsung products are not as simple as the Apple design, and do have features which (subtly) specify orientation. However, the back of the Samsung device additionally has striking ornamentation which is not seen in the Apple design.
Judge Birss thus held that there were three main similarities between the products, and two main differences. The similarities were that the view from the front of the Samsung tablet is very similar to that of the Apple design, neither the Samsung product nor the Apple design have indicator lights or buttons on the front surface or obvious switches or fittings on other surfaces, and both have been designed to enhance the appearance of the thinness of the product (so that it appears to float above the surface on which it rests). The differences were that the Samsung tablets are thinner than the Apple design, and have detailing on the back face.
The judge then considered whether these differences were enough to remove the Samsung tablet from the scope of Apple's registered design. Judge Birss considered that the front view of the Apple design has a clear resemblance to previous tablets available on the market, and could be considered to be part of the same family. The informed user would recognise that the main differences between products in this family lie in features present on the back and sides. Hence, the importance of the similarity between the front view of the Samsung products and the Apple design is diminished in comparison to the differences present on the reverse.
Judge Birss therefore held that, due to the unusual details on the back, "[Samsung's products] 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."
Apple subsequently appealed this decision and, in October 2012, Judge Birss’s decision was upheld by the Court of Appeal. Due to the damaging impression of Samsung created by the proceedings, Apple was ordered to publish apologies both on their own website and through advertisements in major newspapers. The first statement published on their website, which included comments about successful litigation against Samsung in other jurisdictions, was not considered by the court to be a sufficient apology. This was subsequently replaced by an apology formatted such that it always appeared below the bottom of a user’s screen, forcing the viewer to scroll down to see it. In consequence of Apple’s actions, the court has now awarded Samsung costs on an indemnity basis.
During the appeal, the judge also questioned the jurisdiction of the German court to grant an interim injunction, as this injunction was granted after the UK court (acting as a Community Design Court) had issued a decision. Apple undertook to apply to the German court for the injunction to be withdrawn insofar as it related to the registered design, and so no decision was necessary on this point.
This is the first substantive hearing in the ongoing battle between Apple and Samsung, and this decision may therefore carry weight in proceedings elsewhere in Europe.
In addition, this decision clarifies the scope of protection that is provided by design rights, showing that, particularly in a field where there is limited design freedom and significant prior art, the scope of protection may be relatively narrow.
13 November 2012