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25 May 2022TrademarksSarah Speight

Swatch victorious in Samsung watch face dispute

Swatch Group has claimed victory against Samsung in the England and Wales High Court, in a case involving watch face designs.

Samsung customers were able to download digital watch face apps—created by third parties—to their smartwatches from the Samsung Galaxy App store, which resembled numerous Swatch-owned brands.

Samsung was found to have infringed brands in the Swatch basic range, through to higher-end brands such as Tissot, Mido, Hamilton, Longines, Omega, Breguet, Blancpain, Glashütte Original and Jaquet Droz.

The judgment was handed down remotely on May 20 by Justice Falk, bringing a close to the trial that Swatch Group filed in February 2019.

Justin Watts, an IP litigation partner at WilmerHale—which represented Swatch Group in the case—told WIPR that he believes the case will generate a lot of interest.

“In my view, this is a milestone judgment on liability for platform operators, which contains important guidance on a wide range of trademark issues and e-commerce responsibilities for both physical and digital goods.”

Swatch claims that between October 2015 and February 2019 a total of 23 of their trademarks were infringed by 30 watch face apps being made available in Samsung’s app store.

South Korean-based Samsung admitted that the apps—developed by third parties—had been downloaded around 160,000 times in the UK and EU.

Samsung denied liability, claiming that it had not used the marks, that the signs on the apps were not used in a way that indicated that there was any connection with Swatch, and that the conditions for joint liability were not established.

E-Commerce Directive defence

The company also relied on article 14 of e-Commerce Directive (2000).

During the trial, Swatch accepted that Samsung is the “provider of an information society service”, and that the apps in question are “information” for the purposes of article 14. Although the Swiss company accepted that Samsung had failed to remove the apps promptly, it pointed out that Samsung had failed to remove previous downloads of the apps.

This left the fact of whether Samsung had taken action beyond the storage of that information in dispute.

Falk found that: “Based on the approach taken in the existing case law, it is far from clear that what Samsung did in this case was limited to acts of a ‘mere technical, automatic and passive nature’ such that it lacked knowledge of or control over the data.”

She highlighted that Samsung’s R&D centre had “performed a relatively detailed content review with reference to its content review guide”.

Falk added that “only a relatively small part of that guide relates to third parties’ intellectual property rights”.

Further, she noted that Samsung also took active steps, including in relation to facilitating and encouraging the design of apps, and marketing its smartwatches by reference to the availability of watch face apps in the SGA [Samsung Galaxy App] store.

“The commercial benefit it derived from doing so was from sales of its products, rather than any form of charge for storage. It has also promoted some of the apps,” said Falk.

She concluded that Samsung did not have a defence to the infringements under article 14.

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