Samsung Electronics (UK) Ltd v Apple Inc

Community registered design infringement is assessed by the informed user’s overall impression. The court should identify the informed user and existing design corpus, then weigh relevant similarities and differences in light of design freedom and technical constraints. Features dictated solely by function are disregarded. Other functional considerations and available alternatives affect the weight given to a feature. Common features may remain relevant, although they generally carry less weight. Technological advance does not automatically reduce the significance of a visible difference or expand protection over time. Copying is irrelevant. An infringement counterclaim under the Council Regulation (EC) No 6/2002 should be stayed unless special grounds justify proceeding.

Samsung sought a declaration that three Galaxy tablet computers did not infringe Apple’s Community registered design. Apple counterclaimed for infringement. Validity was not in issue in the proceedings, although Samsung had applied to revoke the registration before OHIM.

The court also determined whether Apple’s infringement counterclaim should be stayed pending the OHIM validity proceedings. The central merits issue was whether the Galaxy tablets produced a different overall impression on the informed user from the registered Apple design.

1. Stay. Under Art 91(1) of the Council Regulation (EC) No 6/2002, the infringement proceedings were to be stayed unless special grounds existed. The court considered prejudice, the legislative policy against parallel proceedings and inconsistent judgments, commercial urgency and the overall balance of justice. The parties agreed that the counterclaim should proceed, there was no risk of an inconsistent validity judgment because validity was not before the court, and a stay could cause Apple injustice if infringement were established. Special grounds therefore existed and the counterclaim was not stayed.
2. Applicable approach. The informed user was a particularly observant user of tablet computers who knew the design corpus, paid a relatively high degree of attention and would make a direct comparison. The assessment was visual. Although the design could be broken into features for practical analysis, the court had to disregard features dictated solely by function, consider design freedom and the design corpus, and weigh both similarities and differences before deciding the overall impression. The visual principles in Dyson v Vax [2012] FSR 4, Procter & Gamble v Reckitt Benckiser [2008] ECDR 3 and Rolawn Ltd v Turfmech Machinery Ltd [2008] EWHC 989 (Pat) were applied.
3. Function and design freedom. Article 8(1) excluded features chosen exclusively to make a product perform its function, assessed objectively from the standpoint of a reasonable observer. The multiplicity-of-forms approach was not followed. In an infringement assessment, technical significance and the availability of alternatives affected the weight of a feature even where the feature was not excluded altogether. Copying was irrelevant.
4. Application and result. The Galaxy tablets had a strikingly similar front and belonged to the same pre-existing family of designs. That similarity was reduced by the design corpus. The tablets were materially thinner than the Apple design, and their rear detailing and modest orientation features were significant. The overall impression was different. The Samsung tablets therefore did not infringe Apple’s registered design.

The judgment records earlier decisions on the stay issue:

1. High Court (Chancery Division): Samsung v Apple [2012] EWHC 889 (Ch).
2. Court of Appeal: Samsung v Apple [2012] EWCA Civ 729 held that the OHIM proceedings required the infringement counterclaim to be stayed unless special grounds existed, and remitted that question for determination at trial.
3. High Court (Patents Court): the present court found special grounds and allowed the infringement counterclaim to proceed.