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Apples humble pie

1 December 2012

This article discusses the Court of Appeals judgment in Samsung v Apple concerning a Community Design that Apple registered in 2004. The case was a battle in the global legal war engulfing the parties. This article does not contain a review of the jurisdictional issues other than a necessary reference to the German proceedings in relation to the publicity order. Our interest is in the substance of the judgment relating to the informed user and the place of publicity orders in the light of the lead judgment of the court by Sir Robin Jacob.

Background to the Appeal

In July 2012, HHJ Birss sitting in the High Court declared that Samsungs 10.1, 8.9 and 7.7 tablets did not infringe Apples design because the Samsung tablets did "not have the same understated and extreme simplicity which is possessed by the Apple design" and were "not as cool". The judge also decided that Apple should display a notice on its website and place adverts in the press publicising the judgment. Apple was granted leave to appeal both decisions. After the High Court decision but before the Court of Appeal hearing, the Dusseldörf Oberlandesgericht granted Apple a pan-European interim injunction in respect of the 7.7 tablet. This article considers judgment handed down by the Court of Appeal in October 2012, which affirmed the High Courts decisions, though reduced the scope of the publicity order.

The Informed User

The Court of Appeal started by re-iterating that designs must be assessed from the perspective of the informed user, and by repeating HHJ Birss helpful analysis of the attributes of that informed user. The informed user:

  • is a user of the product in which the design is intended to be incorporated, not a designer, technical expert, manufacturer or seller;
  • is particularly observant, unlike the average consumer of trade mark law;
  • has knowledge of the design corpus and of the design features normally included in the designs existing in the sector concerned;
  • is interested in the products concerned and shows a relatively high degree of attention when he uses them;
  • conducts a direct comparison of the designs in issue unless there are specific circumstances or the devices have certain characteristics which make it impractical or uncommon to do so; and
  • neither (a) merely perceives the designs as a whole and does not analyse details, nor (b) observes in detail minimal differences which may exist.

The scope of protection is for the design as registered

Apples first criticism of the High Courts decision was that the judge did not take into account "that the informed user, noting that the design was from 2004, would know and expect that advances in technology would make thinner tablets possible". The Court of Appeal rejected this critique, holding that "the scope of protection is for the design as registered, not some future, even if foreseeable, variant". The lesson is simple and obvious; if your design changes as a result of technological advances and you want to protect the new design, you have to register the new design.

Should Trade Marks be regarded as design features?

A more interesting issue arose in relation to Apples criticism of the weight the High Court gave to the presence of the Samsung trade mark on Samsungs tablets. HHJ Birss distinguished IsogonaS.L v Centrex S.A.U and said that "the unornamented nature of the front face is a significant aspect of the Apple design", and found that this contrast with Samsung design which was ornamented because, inter alia, it had the Samsung trade mark on it.

The Dusseldörf Oberlandesgericht disagreed, and said that how the trade mark affected the appearance should be ignored altogether. Sir Robin Jacob upheld the High Courts decision:

"If an important feature of a design is no ornamentation, as Apple contended and was undisputed, the Judge was right to say that a departure from no ornamentation would be taken into account by the informed user. Where you put a trade mark can influence the aesthetics of a design, particularly one whose virtue in part rests on simplicity and lack of ornamentation".

Designs are often registered without their trade marks - as registrants seek to expand their protection beyond products containing their own trade marks.

The General Court in Sphere Time v OHIM T-68/10 held that "inasmuch as the contested design represents a promotional item, it is reasonable to hold that, when it is used, it will carry a trade mark". It therefore found that prior art which included a trade mark invalidated an application which did not include any such mark.

It is inevitable that there will be further judicial thinking on the vitiating effect of the appearance of a trade mark on a product similar to a registered design.

Overall impression and the informed user

Apples central criticism of the High Court decision was that the judge had reached the wrong conclusion about the overall impression created by the designs on the informed user.

The Court of Appeal set out the limits on design freedom for someone creating a tablet computer:

"In overall terms for a hand-held tablet (1) you need a flat transparent screen, (2) rounded corners are unremarkable (and have some obvious functional value in a hand-held device), and (3) you need a border of some sort for functional reasons. There is some design freedom as regards ornamentation, the rim, the overall shape (rectangular or with some curved sides) but not a lot. And the main thing, the screen itself was something with which the informed user would be familiar."

So, all tablet computers have to look like tablets; and Apple was not going to be allowed a monopoly over all tablets; therefore, the scope of protection afforded by Apples registered Community Design must be considered accordingly.

In light of this, the Court of Appeal found a "real design difference between Apples sharp edge, vertical side followed by a nearly circular arc of rounding" and the Samsung tablets. It also said that the Samsung tablets were "busier" and "significantly and immediately noticeably thinner than the registered design". Sir Robin Jacob repeated Birss finding that the Samsung tablet was not as cool, and concluded that he would have come to the same conclusion as HHJ Birss, and for the same reasons. He also noted that if Apple had the protection it was seeking it could stifle legitimate competition in the tablet computer market.

Publication orders

The High Court, having found that Samsungs tablets did not infringe, was troubled by Apples post-judgments statements, which had accused Samsung of blatant copying. The judge thought this contained "an innuendo that Samsung infringe[d]" Apples rights. He therefore ordered Apple to put a notice on its website for six months publishing the declaration of non-infringement, together with adverts in the press.

Apple were extremely concerned about this, and hastily obtained a stay from the Court of Appeal until the appeal on non-infringement was decided. In his judgment on the stay, Sir Robin Jacob noted that the power to grant a publicity order was meant to be used as a deterrent to infringers and to publicise decisions in intellectual property cases; in this case, he thought neither of these reasons applied. His judgment concluded: "one asks the question, is it useful to publicise the decision after what has happened in the press already, to which the answer is plain: not at all." By the time the appeal came round in October, that position had changed.

In his October judgment, Sir Robin Jacob first clarified that court does have power to order rightsholders to publicise declarations of non-infringement. Such orders are not made to punish the party concerned, or to make that party grovel; "the test is whether there is a need to dispel commercial uncertainty". And whilst such an order would have been unnecessary after the High Court decision, the Oberlandesgerichts intervening decision had created commercial uncertainty such that a publicity order was now required to "dispel all the fog… Apple itself must (having created the confusion) make the position clear; that it acknowledges that the court has decided that these Samsung products do not infringe its registered design". Accordingly, Apple were ordered to put on their website for a month two paragraphs saying that Samsungs tablets had been found not to infringe by the High Court, and that the Court of Appeal had affirmed that judgment.

When the notice appeared on Apples website, the two paragraphs suggested by Sir Robin Jacob were interspersed with four further paragraphs. Three laboured the point that the High Court said that Apple was cooler than Samsung. The final one, which succeeded the paragraph saying the Court of Appeal had upheld the original findings, read as follows:

"However, in a case tried in Germany regarding the same patent, the court found that Samsung engaged in unfair competition by copying the iPad design. A U.S. jury also found Samsung guilty of infringing on Apples design and utility patents, awarding over one billion U.S. dollars in damages to Apple Inc. So while the U.K. court did not find Samsung guilty of infringement, other courts have recognized that in the course of creating its Galaxy tablet, Samsung wilfully copied Apples far more popular iPad."

Samsung went swiftly back to court, complaining that this statement just created further confusion. The Court of Appeal were understandably cross; Sir Robin Jacob is reported to have called this a plain breach of the order, and Apple were ordered to post a new, compliant statement on their website within 48 hours.

Practical Advice

The first and obvious lesson is that the prudent owner of a registered design will keep his portfolio up to date with changing fashions and developments in the design field and register new designs when appropriate. It is neither difficult nor expensive to do so. If you do want to protect a design, plan what you want to protect, and monitor this to make sure that if your designs change, new applications are filed.

Secondly, this is another Court of Appeal decision which shows it can be tough to bring a successful infringement action in respect of registered Community Designs. At first instance, HHJ Birss said that registered Community Designs protected more than identical or near identical products; but the combination of the informed user and the exclusion of features dictated by function does limit protection for designs which fulfil a function.

And thirdly, in respect of all IP litigation, rightsholders should be aware that the courts have clear guidance that they will use to order noisy rightsholders to publicise their defeats. To avoid the embarrassment of a public notice, rightsholders should be careful about making comments regarding litigation they are involved in until that litigation is resolved.

This article was co-authored by Peter Ellis and Giles Parsons and was first published in Intellectual Property Magazine (December 2012).

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