1 August 2013Jurisdiction reportsMichiel Rijsdijk

Apple V Samsung: a lack of consistency

On May 31, 2013, the Supreme Court of the Netherlands delivered a verdict in an appeal about whether the Samsung Galaxy Tab 10.1 and the Tab 10.1v infringed Apple’s Community Design registration (CDR) no. 181607-0001. Importantly, the procedure at hand is not about comparing the iPad and the Galaxy Tab. The design registration filed by Apple is different from the iPad1 or iPad2—they are nearly twice as thin as the registered design and the length and width of the iPads are different from the registered shape.

In 2011, Apple brought interim injunction proceedings against Samsung, claiming Samsung infringed its CDR. The Hague District Court found that the Galaxy Tab 10.1 and Tab 10.1v did not infringe and did not grant a preliminary injunction against Samsung. Apple filed an appeal procedure.

The judgment was upheld on appeal. First, the court decided that the CDR was valid. Although all the design elements found in the registration could also be found in the prior art, the combination of these elements in one design was not yet known.

Therefore the overall impression of the design was considered to be different from its prior art to the informed user. Furthermore, the court decided that because the design is a combination of prior art and not very different from those designs already on the market, the extent to which it is protected is limited.

The court applied less strict assessment criteria to establish whether a later design was different from the registration, finding that not only the overall impression but also details should be considered. The different proportions of the Galaxy Tab 10.1 and Tab 10.1v, the subtle differences in shape and the difference of the frame were considered enough to constitute a difference to informed users.

"The Court of Appeal referred to Article 6 of EU Regulation 6/2002 and concluded that any design which has been made available to the public should be taken into account."

Apple then brought an appeal to Supreme Court, putting forward two primary questions of law. First is whether, when judging the individual character of the registered design, the design should be compared to an individual older model, a collection of older designs, or prior art in general.

The Court of Appeal referred to Article 6 of EU Regulation 6/2002 and concluded that “any design which has been made available to the public” should be taken into account. Thus the party advancing a defence may refer to more than one piece of prior art.

The second question is whether, when determining the degree of protection, it is relevant to what extent the protected design’s own character differs from the prior art. For both questions the Supreme Court concluded that the prior judgment was based on a correct interpretation of the law.

The judgment handed down by the Dutch Court of Appeal is just one in a long list of cases involving Apple and Samsung. The UK High Court and the Oberlandesgericht Düsseldorf handed down earlier judgments regarding the same infringement question. In the High Court judgment, the court was of the opinion that the Samsung Tab 10.1, Tab 8.9, and Tab 7.7. do not infringe Apple’s design registration. This procedure did not entail the validity of the design registration.

The decision of the Dutch Court is in line with that opinion and argumentation. The British judge referred to the family of prior art, and continued that the design and the Samsung tablets look like members of that same family. The reference to a family of prior art and later in the judgment to the overall impression of the designs is equivalent to the assessment criteria in The Hague judgment.

In Germany the Landgericht Düsseldorf decided that Samsung did infringe Apple’s rights, but this decision was overturned on appeal. However, the opinion of the Düsseldorf court referred to only one piece of prior art, namely the Ozolins design, and thus used different assessment criteria from the Dutch and British courts.

The interpretation of Regulation 6/2002 is not yet uniform throughout the EU. The Court of Justice of the EU has so far judged only four cases regarding the regulation: FEIA in 2009, Pepsico in 2011, Celaya in 2012, and Neumann in 2012. The difference in interpretation that becomes evident from the three judgments may lead to different levels of protection throughout the EU. The CDR may not always provide the community-wide protection it promises as long as no uniform interpretation of the regulation is available.

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk