MONTRES BREGUET S.A. & Ors v SAMSUNG ELECTRONICS CO. LTD & Anor

An online platform may itself use trade marks where its overall conduct goes beyond providing a neutral technical facility. Relevant factors include control over availability, content review, promotion, commercial interest and the way the platform presents the goods.

For trade mark purposes, watch-face applications may be similar to smartwatches and watches. Branding displayed on a downloaded watch face may be use in relation to those goods where it appears in the conventional position and is intended to denote, or appear to denote, the origin of the watch.

An intermediary cannot rely on the hosting safe harbour where its content-review process gives it awareness of facts from which infringement would have been apparent to a diligent operator and it fails to act expeditiously.

Swatch group companies claimed trade mark infringement against Samsung concerning 30 watch-face applications made available through the Samsung Galaxy App store. The applications had been developed by third parties, but Samsung operated the store, supplied development tools, reviewed applications, controlled their availability and promoted its smartwatches by reference to the store’s watch-face range.

The issues included whether Samsung had used the signs in the course of trade; whether the applications and watch faces were used in relation to smartwatches or watches; identity, similarity, likelihood of confusion and injury to marks with a reputation; and whether Samsung was protected by Article 14 of the e-Commerce Directive and regulation 19 of the Electronic Commerce (EC Directive) Regulations 2002.

1. Use by Samsung. Samsung’s conduct had to be assessed as a whole. Its operation of an official store for Samsung products, assistance to developers, compulsory review process, control over availability, customer support, promotion and commercial interest went beyond providing a technical environment. Samsung therefore used the signs in its own commercial communications for Article 9 purposes.
2. Goods and use in relation to goods. The applications were not identical to registered hardware goods, and software was not to be treated as a subset of hardware. They were nevertheless similar to smartwatches, particularly because of complementarity and their common commercial context. Smartwatches were a form of watch and at least highly similar to watches. An app name or preview was used in relation to the application and the watch face it produced. Branding displayed on the downloaded watch face was used in relation to smartwatches because it appeared in the conventional position for watch branding and was intended to denote, or appear to denote, the origin of the watch.
3. Functions and confusion. The signs were not merely descriptive. In the official Samsung store, the average consumer could assume a licensing or other economic arrangement with the watch maker. The developer’s name did not sufficiently dispel that assumption. The context, including post-sale use, supported findings of direct or indirect confusion.
4. Reputation and injury. The relevant marks had reputations in the EU or UK as applicable. A link was established. Use on watch faces was capable of dilution, tarnishment and free-riding. Actual injury was established for apps 7, 8 and 14, but not for the remaining apps because the evidence did not establish sufficient injury or a serious future risk.
5. Hosting defence. Article 14 and regulation 19 were interpreted in light of Google France and L’Oréal v eBay. The existence of a notice-and-takedown process was not itself a defence. Samsung’s review process made it aware of app names and watch-face branding. A diligent operator would have identified the infringement, so the Article 14(1)(a) condition was not met.
6. Disposition. Infringement under Article 9(2)(a) or (b) was established for apps 1–18, 20–22 and 26–30, with the particular scope identified in Appendix 3. Article 9(2)(c) infringement was established for apps 7, 8 and 14 in respect of signs appearing on the watch face. Samsung had no Article 14 defence.