Apple takes on Samsung

While the patents of both companies dominate many proceedings in Düsseldorf and Mannheim, one of Apple’s community designs took centre stage in two preliminary injunction proceedings before the Düsseldorf District Court and the Düsseldorf Court of Appeal. The first case concerned Samsung’s tablet computer, ‘Galaxy Tab 10.1’, and the second one concerned Samsung’s successor tablet model, ‘Galaxy Tab 10.2’.

In the first proceedings, Apple asserted claims based on the community design and on unfair competition for passing off of Apple’s well-known iPad tablet computer. The Düsseldorf District Court had granted a preliminary injunction against Samsung South Korea and a German subsidiary of Samsung based on the community design, which contained a restraining order concerning the marketing and selling of the Galaxy Tab 10.1 within the European Union.

Samsung filed an opposition. The preliminary injunction was upheld by the Düsseldorf court, except for the restraining order against Samsung South Korea, which was limited to actions committed in Germany (for lack of judicial competence). The appeal filed by Samsung was decided by the Düsseldorf Court of Appeal with a judgment handed down on January 31, 2012.

In the judgment, the Court of Appeal denied claims based on the community design, and accordingly rejected Apple’s demand for a restraining order covering the entire EU (which would be possible only if the community design claims were affirmed). The restraining order for Germany was affirmed on the basis of unfair competition laws.

The Court of Appeal confirmed that the community design is new and has individual character. Samsung had denied both requirements for protection, referring to several pre-existing products and design rights for tablet computers. The closest prior art is a German design published on September 10, 2003, which was first submitted in the appeals proceedings. It concerns a ‘flat screen without a frame’.

While the appeals court did not deny that this prior art is ‘close’ to Apple’s community design, it nevertheless held that the design has individual character. The differences are primarily in the quadrant-like passage of the rear front into the corners and sides, the thin profile and the integrated connection sockets of Apple’s design.

Since the informed user would take the prior art into account when evaluating whether the attacked tablet falls within the design’s scope of protection, it was assumed that the user would pay special attention to the features in which Apple’s design differs from the prior art, in particular the design of the basin at the rear and the passage into the sides.

“While the patents of Apple and Samsung dominate many proceedings in Düsseldorf and Mannheim, one of Apple’s community designs took centre stage in two preliminary injunction proceedings before the Düsseldorf courts.”

According to the court, the Samsung Galaxy Tab 10.1 differs from the community design exactly in these features. Instead of slowly blending into the sides, the Galaxy’s rear front is offset from the frame. This optical separation between the rear front and the sides is enhanced by the different colours used for both housing elements. Therefore, the court held that the attacked tablet computer produced an overall impression which was different from the community design.

However, the Court of Appeal affirmed claims against the Galaxy Tab 10.1 based on unfair competition. Under German unfair competition law, the manufacturer of original products may either have a claim for passing off if the attacked product leads to confusion about the origin of the product, or have a claim for taking unfair advantage of the repute of a well-known product.

The first requirement of both claims is that the product is ‘original’, in the sense that consumers assume it originates from a certain company. The court held that the iPad possessed an overwhelming degree of originality in that sense. Further, both claims require that the product in question is close enough to the original that the consumer regards it as an imitation.

In the second case, the Düsseldorf District Court denied the requested preliminary injunction against Samsung’s successor tablet Galaxy Tab 10.2. This model had been modified in that the frame at the front had been broadened and the trademark Samsung had been printed in much brighter colour at the front. The court denied community design infringement. It also denied claims based on unfair competition since the consumer, who is used to tablet computers, will take differences in the design into account.