Samsung Takes a Bite Out of Apple

The UK High Court decided in July that the Samsung Galaxy Tab 10.1, the Samsung Galaxy Tab 8.9, and the Samsung Galaxy Tab 7.7 do not infringe Apple's Registered European Community Design number 000181607-0001 (hereinafter "the Apple Design"). Samsung did not contest the validity of the Apple Design because doing so may well have led to a stay of those proceedings under Article 91 of Council Regulation 6/2002 (hereinafter "the Regulation"), since Samsung had already launched invalidity proceedings at the Office of Harmonization for the Internal Market (OHIM). At the time of writing, the invalidity procedure is still pending at OHIM. Article 10 of the Regulation states that the scope of protection of a Community design includes any design which does not produce a different "overall impression" on the "informed user". In assessing the scope of protection, the degree of freedom of the designer in developing his design is taken into consideration. Recital 14 of the Regulation informs us that the overall impression produced on the informed user depends upon the existing design corpus, taking into consideration the nature of the product that it is applied to, the industrial sector to which it belongs and the degree of freedom of the designer in developing the design. Thus, even though the validity of the Apple Design was not in issue here, the prior art was still relevant in determining its scope of protection. An interesting quirk of European Community design law is that a registered European Community design application has to include an indication of the product to which the design is applied (Article 36(2) of the Regulation), but that indication does not affect the scope of protection (Article 36(6)), even though Recital 14 in the Regulation states that the overall impression depends on the existing design corpus taking into consideration the nature of the product that the design is applied to (!) For those unfamiliar with European Community design law, the "informed user" is not "an average consumer" nor is he a designer, technical expert, manufacturer or a seller. He is a particularly observant user, who has knowledge of the design corpus and who conducts a direct comparison of the designs at issue. Both Samsung and Apple agreed that the informed user is a user of handheld (tablet) computers. Samsung submitted a number of different products/designs that it considered to form part of the design corpus. The judge considered that the informed user was a person who would consider the products side by side. Apple argued that a series of seven different features in the Apple Design were present in the Samsung tablets and therefore the overall impression produced by the Samsung tablets on the informed user is not different from that of the Apple Design. Samsung argued that the similarities identified by Apple resulted from the very limited degree of freedom afforded to the designer. The judge considered each of the seven features put forward by Apple, analysing the design freedom, their occurrence in the overall design corpus and the similarity of the Samsung tablet for each feature, before providing a concluding remark in relation to each feature. The judge remarked that the front view of the Samsung tablets is very similar to the Apple Design. However, he also remarked that while the view from the front is important, "there is a risk of overemphasis. The design is for an object which is hand held and therefore does not simply rest on a desk with its back invisible. The informed user, who is particularly observant, will pick up these objects and look at the back". According to the judge, the back of the Apple Design "is the place on which there are fewer constraints on design freedom (apart from being generally flat) and more variety in the design corpus". He continues by stating that the detailing on the back of the Samsung tablets is something that would strike the informed user. The judge concluded in the decision that, while the similarity of the Apple Design and the Samsung tablets is something which struck him initially, it is not something which would be particularly striking to the informed user, considering the design corpus. He stated that the overall impression formed on the informed user by the Samsung tablets would be heavily influenced by their very thin nature and the detailing on the back, leading him to conclude that the Samsung tablets form a different overall impression on the informed user from the Apple Design, and resulting in a finding of non-infringement. If you wish further information on the Apple and Samsung cases, or as to how design protection may affect or be useful to your business, please contact your usual contact at Swindell & Pearson Ltd or Scott Harrison at [email protected].

Swindell & Pearson has been helping businesses and individuals protect and defend their ideas, innovations and brands for over 130 years. With its head office in Derby, the firm also has offices in Stoke, Wolverhampton, Stafford, Sheffield and Burton. To find out how Swindell & Pearson can help you with any intellectual property requirements please get in touch via [email protected] or by telephone on 01332 367 051.