Samsung Electronics (UK) Ltd & Anor v Apple Inc

A claimant seeking jurisdiction under the Community Designs Regulation must advance a positive and sufficiently clear case establishing the jurisdictional facts. An estoppel cannot supply jurisdiction where the relevant assertion is not made. An action for a declaration of non-infringement may proceed even though validity proceedings are pending before OHIM. The statutory exclusion of validity challenges requires validity to be assumed, but does not prevent the national court from considering matters relevant to infringement, including the scope of protection and design corpus. A threat may be conveyed indirectly through words or conduct and must be assessed cumulatively from the perspective of a reasonable recipient. However, proceedings brought elsewhere in Europe, general assertions of enforcement, or silence in response to an unrelated request do not, without more, establish a threat to sue in England and Wales.

Samsung UK and SEC sought declarations that Samsung Galaxy tablet computers did not infringe Apple’s registered Community design and injunctions restraining alleged groundless threats. Apple challenged SEC’s jurisdictional standing, sought a stay of Samsung UK’s declaration claim because related invalidity proceedings were pending before OHIM, and applied to set aside permission to serve the threats claim out of the jurisdiction. Samsung also sought expedition of the surviving proceedings.

The applications required determination of whether SEC had established a jurisdictional basis under Articles 81 and 82 of the Community Designs Regulation; whether Article 91 required a stay; whether the pleaded European proceedings, public statements and correspondence constituted actionable threats under the Community Design Regulations 2005; and whether the claim should be expedited.

1. SEC’s jurisdiction. SEC had not positively pleaded or otherwise advanced facts establishing that Apple was domiciled or established in England and Wales, or that SEC had an establishment here. Its equivocal reliance on the German finding, coupled with an alleged estoppel, was insufficient. An estoppel can operate only in relation to an assertion which the other party wishes to deny. SEC’s declaration claim therefore could not proceed for want of jurisdiction.
2. Samsung UK’s declaration claim. The application for a stay failed. Article 91’s express exclusion of actions for declarations of non-infringement meant that such an action could continue while an invalidity application was pending before OHIM. Article 84(4) required validity to be assumed in the declaration proceedings; it did not restrict the court from considering the scope of protection or other matters relevant to infringement. The Regulation allocated validity and infringement between different procedures, and Article 24(1) confirmed that validity could also be raised by counterclaim in infringement proceedings. The court rejected the proposed distinction as an impermissible emasculation of declaration proceedings.
3. Groundless threats. The test was objective and contextual. Each communication or act had to be considered as a reasonable recipient would understand it, with all relevant circumstances taken into account. A threat need not be express and could arise from a cumulative pattern of conduct. The German and Dutch proceedings, pan-European relief sought there, public statements about protecting intellectual property, and Apple’s failure to answer Samsung’s letter did not amount to a sufficiently arguable threat to commence proceedings in England and Wales. The letter sought confirmation of non-infringement, not an assurance against proceedings; its unanswered request could not be treated as a threat. The later counterclaim did not retrospectively convert earlier conduct into an actionable threat. Permission to serve out was therefore set aside.
4. Expedition. The commercial importance of resolving the dispute while the product designs remained current justified expedition, notwithstanding Samsung’s earlier lack of urgency. An April or May trial would be unfair and unrealistic. The case was ordered to be expedited with a view to trial in June 2012.