Samsung Electronics (UK) Ltd v Apple Inc

The scope of a registered Community design is assessed by the overall impression it produces on an informed user, taking account of the designer’s freedom. The exercise is visual and holistic. Features may be analysed to explain the conclusion, but must not replace the overall comparison.

An appellate court will not disturb that evaluative conclusion absent an error of principle. The scope is that of the design as registered, not a foreseeable later variant. Meaningful differences in thickness, edge treatment, ornamentation, orientation and rear appearance may produce a different overall impression.

The court may grant a publicity injunction to a successful non-infringer under section 37(1) of the Senior Courts Act 1981, but only where proportionate and needed to dispel real commercial uncertainty.

Samsung Electronics (UK) Ltd v Apple Inc concerned Apple’s registered Community design for a handheld computer and three Samsung Galaxy tablet computers. HHJ Birss QC, sitting in the Patents Court, held that the tablets did not infringe the design: [2012] EWHC 1882 (Pat). He subsequently ordered Apple to publicise that result: [2012] EWHC 2049 (Pat).

Apple appealed both decisions. It challenged the comparison of the designs and the order requiring publicity. The central issues were whether the tablets produced a different overall impression on the informed user and whether a publicity order was justified after a successful declaration of non-infringement.

1. Both appeals were dismissed. The declaration that the Galaxy Tab 10.1, 8.9 and 7.7 did not infringe Apple’s registered Community design was upheld. The publicity order was retained in principle but varied as to its form and duration.

2. Under Article 10 of the Community Design Regulation EC 6/2002, the issue is whether the accused design produces a different overall impression on the informed user, with the degree of design freedom taken into account. The informed user is particularly observant, knows the relevant design corpus, and ordinarily makes a direct comparison. The exercise remains one of visual overall impression, rather than a verbal tally of separate features.

3. The judge had made no error of principle. He was entitled to treat the scope as protection for the registered design itself, rather than for a future thinner version made possible by technological advances. He was also entitled to give slight weight to the Samsung name, camera hole and speaker grille where the asserted design feature was an unornamented front face. The tablets’ greater thinness, curved sides, less crisp edges, orientation features and substantially busier rear surfaces supported the conclusion that they produced a different overall impression.

4. An appeal against such an evaluative assessment succeeds only for an error of principle. The Court of Appeal would itself have reached the same conclusion. It also observed that the broader scope asserted by Apple would unduly foreclose legitimate design competition in tablet computers.

5. The court had jurisdiction under section 37(1) of the Senior Courts Act 1981 to grant a publicity injunction ancillary to a declaration of non-infringement. The proper and proportionate test was whether there was a real need to dispel commercial uncertainty. Although earlier publicity alone would not have justified an order, Apple’s later Europe-wide German injunction concerning the 7.7 had created substantial uncertainty. Apple therefore had to acknowledge the English Community-wide declaration.

6. The newspaper notices were affirmed, subject to revised wording. Instead of a homepage notice, Apple was required to place a link headed “Samsung/Apple UK judgment” on its homepage for one month, together with the specified notice.

• Court of Appeal (Civil Division): Both appeals dismissed in [2012] EWCA Civ 1339. The non-infringement declaration was affirmed and the publicity order was varied.
• High Court, Patents Court: HHJ Birss QC held that the three Samsung tablets did not infringe Apple’s registered Community design: [2012] EWHC 1882 (Pat).
• High Court, Patents Court: HHJ Birss QC made a consequential publicity order requiring Apple to publicise the non-infringement result: [2012] EWHC 2049 (Pat).