Out-Law News | 11 Jul 2012 | 9:24 am | 3 min. read
Apple had claimed that versions 10.1, 8.9 and 7.7 of Samsung's Galaxy Tablets infringed on its Community design rights, but Mr Justice Birss QC disagreed.
The judge said that though he initially thought the Samsung products looked "similar" to Apple's protected design, an 'informed user' would not have thought the same. Although Samsung's devices looked near-identical to Apple's design from the front, that fact only meant that informed users would more prominently notice the differences at the sides and back, he said.
"From the front both the Apple design and the Samsung tablets look like members of the same, pre-existing family," Mr Justice Birss QC said in the ruling. "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."
"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, almost insubstantial 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," he said.
A registered Community design is a monopoly right for the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and materials of the product or its ornamentation.
Applications are filed at the Office for Harmonisation in the Internal Market (OHIM). Approved Community designs cover all 25 member states of the European Union.
In order to qualify for Community design rights, designs must be new and have individual character.
Under the EU's Regulation on Community design rights a design is said to be new if it differs from known designs by more than "immaterial details". To have individual character the designs must give an "informed user" a different "overall impression" from their "overall impression" from other known designs. "In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration," according to the Regulation.
Designers can obtain up to 25 years worth of protection over registered Community designs, although the protection has to be renewed every five years.
Mr Justice Birss QC said that the 'informed user' for the purposes of this case were individuals who used handheld tablet computers. He also said that Apple's iPad and iPad2 devices were not "identical" to the design registered to the company and that it "would be a matter of debate" whether or not either device fell "within the scope of protection". Samsung has asked the OHIM to invalidate Apple's rights to its protected Community design.
Products which are not exactly the same as Community registered designs may still fall within the scope of protection of those designs, Mr Justice Birss QC said. He added that "copying is irrelevant to the issue of infringement" and that the scope of protection of designs was dependent on how the protected design and the alleged infringing designs are considered "side by side" as well as what the observations of informed users are.
"Although no doubt minute scrutiny by the informed user is not the right approach, attention to detail matters," the judge said.
"Apple has now lost two recent cases at the High Court, one in a patents case against HTC and now this one in relation to design rights against Samsung," intellectual property law expert Deborah Bould of Pinsent Masons, the law firm behind Out-Law.com, said. "The result of these rulings is that the risk of being sued by Apple for 'me too' tablets and smartphones has reduced to some extent, although Apple does have a large patent portfolio which provides it with other ammunition to use on competitors."
"One of the interesting points from the ruling was Mr Justice Birss QC's finding that informed users are used to seeing flat, simple, thin rimmed front screens. As a result he said that these design features do not stand out to any significant extent and their impact should not be over emphasised," Bould added.
The High Court case was the first "substantive" ruling within the EU on the issue of whether Apple's design rights are infringed by Samsung's devices, Mr Justice Birss QC said. Apple and Samsung have been embroiled in a lengthy global dispute over intellectual property rights.
Last year a German court issued a preliminary pan-EU injunction banning Samsung tablet computers being sold on account that they infringed Apple's design rights, but that design was overturned on appeal. A preliminary injunction banning Samsung tablets from sale in Germany was issued by the court under unfair competition laws though.
Apple has failed to obtain bans against Samsung tablets in the Netherlands though, where two courts have rejected the company's claim in preliminary proceedings that Samsung has infringed on its rights.
The European Commission is currently investigating whether Samsung abused a dominant market position in the mobile phone industry. The Commission said that Samsung was obliged to licence the use of patents relating to 3G mobile and wireless technology to rivals on fair, reasonable and non-discriminatory (FRAND) terms but may have breached this requirement when trying to enforce its patent rights against those rivals, including Apple, in court.