AIPPI 2013: Design law implications from Apple v Samsung
Continuing disputes between Apple and Samsung have forced individual jurisdictions to ask questions about design laws, lawyers have claimed.
The US and South Korea-based technology companies have been trading blows for more than three years over their smartphones, resulting in around 50 lawsuits, the most high-profile of which saw Apple awarded $1.05 billion in damages.
Speaking at the International Association for the Protection of Intellectual Property Forum and Exco meeting in Helsinki on September 6, smartphone and design law specialists assessed the continuing disputes in relation to design laws.
Making reference to the August 2012 case, which saw Apple awarded $1.05 billion for Samsung’s infringement of more than 20 patents, Chris Carani, partner at McAndrews Held & Malloy IP in Chicago, said the companies’ battle was arguably the world’s most famous IP case to date.
Describing it as a "war of the roses for smartphones", Carani said the dispute was the first time an IP related case had been given such great attention in the mainstream media.
Despite the case being primarily concerned with patent infringement, Carani said aspects of US design law played a large part in the jury's decision, causing other jurisdictions to assess rules regarding designs.
"In US law, the system for designs falls as a subsidiary under patent law," said Carani.
"However, when submitting a design drawing, any dotted lines included in the design are not included. A designer can state what the purpose of a dotted line is into a specification, but they do not form part of the final patented design. So why have them at all?"
"According to Judge Birss [the judge in a UK dispute between the companies], a large part of the decision related to the width and shape of the phones, specifically the design of curved corners. Apple was clever in ensuring this part of the design was submitted using non-dotted lines."
Charles Gielen, of counsel at Dutch law firm Nauta Dutilh, said Apple v Samsung has caused problems across the EU, particularly in light of the CJEU's approach to the Community Design Regulation (CDR)
According to the CDR, a design shall be registered as a Community design to "the extent that it is new and has individual character”.
It adds that a design "... will be new if no identical design has already been made available to the public" and that it would need to have individual character if it creates a different overall impression on an ‘informed user’ to that of existing designs.
The CJEU has indicated it would not always need to consider a comparison from an informed user, which is normally someone with personal knowledge of the sector or design, but Gielen said this aspect was perhaps unnecessarily used in Apple and Samsung’s 2012 litigation.
"It cannot be ruled out that a comparison may be impractical or uncommon in the sector concerned,” Gielen said.
