Samsung Electronics (UK) Ltd v Apple Inc

Where validity of a registered Community design is already in issue before OHIM, article 91(1) of the Council Regulation (EC) No 6/2002 on Community designs does not require a stay of a claim for a declaration of non-infringement merely because the design proprietor counterclaims for infringement. Absent special grounds, the required stay applies only to the infringement counterclaim.

This construction preserves the alleged infringer’s ability to obtain a prompt determination of non-infringement. It also accords with the Regulation’s purpose of avoiding concurrent determinations of validity. Special grounds for allowing the counterclaim to continue must be sufficiently substantial to justify the resulting risk of parallel validity proceedings and inconsistent decisions.

Samsung sought a declaration that its Galaxy tablet computer did not infringe Apple’s registered Community design. Separately, Samsung group companies had applied to OHIM for a declaration that the design was invalid. Apple counterclaimed for infringement.

Mann J refused Apple’s application to stay the English proceedings and directed an expedited trial: [2012] EWHC 889 (Ch). Apple appealed. The central question was whether article 91(1) of the Council Regulation (EC) No 6/2002 on Community designs required a stay of both the non-infringement claim and the infringement counterclaim, or only the counterclaim.

1. The court dismissed Apple’s appeal on the principal issue. Samsung’s claim for a declaration of non-infringement was not to be stayed and could proceed to the expedited trial.

2. Article 91(1) prevents simultaneous consideration of the validity of a registered Community design in different fora, subject to special grounds. A declaration of non-infringement does not create that mischief because validity cannot be put in issue in such an action under article 84(4). The expression “the proceedings” in article 91(1) therefore refers, in this setting, to the infringement action which falls within the provision, not to the expressly excepted non-infringement claim.

3. Apple’s counterclaim was an infringement action and was consequently subject to the mandatory stay, unless special grounds justified its continuation. The court rejected Apple’s construction, under which its counterclaim would require a stay of the whole action. That construction would substantially impair the useful ability of an alleged infringer to obtain a rapid determination that its product does not infringe.

4. The court declined to define special grounds exhaustively. They must be sufficiently important and substantial to justify allowing proceedings to continue despite the risk of parallel active validity proceedings and inconsistent decisions. Relevant matters might include the absence of a validity issue in the English proceedings, an objectively justified need for speed, and the parties’ position. The parties’ agreement alone could not constitute special grounds.

5. The court remitted to the Patents Court the issue whether special grounds justified allowing Apple’s counterclaim to continue. No reference to the CJEU was necessary, as the court considered the proper interpretation free from relevant doubt.

• Court of Appeal (Civil Division): By this judgment, [2012] EWCA Civ 729, the court dismissed Apple’s appeal against refusal to stay Samsung’s non-infringement claim. It held that the infringement counterclaim was subject to article 91(1), absent special grounds, and remitted that issue.

• High Court of Justice, Chancery Division, Patents Court: Mann J, [2012] EWHC 889 (Ch), refused Apple’s application to stay Samsung’s claim and gave expedited case-management directions for the claim and counterclaim.