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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339 (18 October 2012) URL: https://www.bailii.org/ew/cases/EWCA/Civ/2012/1339.html Cite as: [2013] EMLR 10, [2012] EWCA Civ 1339, [2013] FSR 9, [2013] FSR 134, [2013} FSR 9, [2013] ECDR 2 |
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ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION PATENTS COURT
HHJ BIRSS QC
HC 11 C03050
Strand, London, WC2A 2LL |
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B e f o r e :
LORD JUSTICE KITCHIN
and
SIR ROBIN JACOB
____________________
Samsung Electronics (UK) Limited |
Claimant/ Respondent |
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| - and - |
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Apple Inc |
Defendant/Appellant |
____________________
Lord Grabiner QC, Mr Michael Silverleaf QC and Richard Hacon
(instructed by Freshfields Bruckhaus Deringer LLP) for the Defendant/Appellant
Hearing date: 28 September 2012
____________________
Crown Copyright ©
Sir Robin Jacob ...giving the first judgment at the invitation of Longmore LJ):
Samsung
(I shall use "
Samsung
" variously to mean
Samsung
Electronics (UK) Ltd., the UK subsidiary of the Korean company
Samsung
Electronics Co. Ltd, "SEC", or the entire
Samsung
Group. The context will make it clear which). The judgments are under appeal by
Apple
. By the first, of 9th July 2012, [2012] EWHC 1882 (Pat), Judge Birss held that three
Samsung
Galaxy tablet computers, the 10.1, the 8.9 and the 7.7 did not infringe
Apple
's registered Community Design No. 000181607-0001. By the second, of 18th July 2012, [2012] EWHC 2049 (Pat), he held that
Apple
should be compelled to publicise the fact that it had lost in manners specified in the consequential order.
Apple
's appeal in respect of the non-infringement judgment was argued by Mr Michael Silverleaf QC and Mr Richard Hacon. Its appeal in respect of the publicity order was argued by Lord Grabiner QC and Mr Hacon. In respect of both appeals,
Samsung
's case was argued by Mr Henry Carr QC and Miss Anna Edwards-Stuart.
Samsung
copied
Apple
's iPad. Infringement of a registered design does not involve any question of whether there was copying: the issue is simply whether the accused design is too close to the registered design according to the tests laid down in the law. Whether or not
Apple
could have sued in England and Wales for copying is utterly irrelevant to this case. If they could, they did not. Likewise there is no issue about infringement of any patent for an invention.
Apple
's registered design and the
Samsung
products. The registered design is not the same as the design of the iPad. It is quite a lot different. For instance the iPad is a lot thinner, and has noticeably different curves on its sides. There may be other differences - even though I own one, I have not made a detailed comparison. Whether the iPad would fall within the scope of protection of the registered design is completely irrelevant. We are not deciding that one way or the other. This case must be decided as if the iPad never existed.
Samsung
tablets is concerned I simply (I will have to say more about the August German decision) record the position:
The Netherlands
On June 27th 2011Apple
applied for a preliminary injunction in respect of all three
Samsung
tablets. It was refused at first instance and on appeal.
Apple
has an outstanding petition to the Supreme Court on a point of law. On 8th September 2011
Samsung
issued a claim for a declaration of non-infringement which is on-going.
Spain
Samsung
issued a claim for a declaration of non-infringement on 8th September 2011. The claim is ongoing.
Apple
are challenging jurisdiction. How far that can get is perhaps questionable given that before it did so it entered a defence on the merits. It may well be that the proceedings have now been overtaken by events in that there is a European-wide declaration of non-infringement granted by HHJ Birss and upheld by this judgment. No preliminary injunction has been sought in Spain and none is in force.
Germany
On 4th August 2011Apple
applied ex parte for a preliminary injunction in relation to the 10.1. It was granted without
Samsung
having an opportunity of being heard. Moreover it was granted on a pan-European basis. The defendants were SEC and its local German subsidiary. Subsequently the injunction was restricted to Germany as regards SEC.
On 24th October 2011 the Landgericht Düsseldorf granted a pan-European injunction (excluding Germany) which included the 7.7 but not the 10.1 against SEC's German subsidiary but refused such an injunction as against SEC in respect of the 7.7.Apple
appealed the decision to refuse pan-European relief against SEC.
The registered design injunctions in respect of the 10.1 and 8.9 were set aside on appeal in January 2012.

Apple
issued a main action in respect of all the
Samsung
tablets on 25th November 2011. I interpolate that in Germany proceedings for an interim injunction are regarded as separate, whereas here an interim injunction is granted within a main action or, in very urgent cases, a main action which the plaintiff undertakes to commence immediately. The part of the main action concerning alleged infringement of the
Apple
registered design was withdrawn on 24th February 2012.
Notwithstanding the withdrawal of the main action, and then HHJ Birss's final decision on the merits on 9th July 2012,Apple
persisted in its appeal from the refusal on 24th October 2011 to grant a pan-European injunction against SEC in respect of the 7.7. On 24th July 2012 the German Court of Appeal, the Oberlandesgericht, allowed the appeal and granted a pan-European interim injunction in respect of the 7.7 against SEC, and its German subsidiary.
In the course of argument before us, as I shall recount later,Apple
undertook to apply forthwith to the German court for that injunction to be completely withdrawn so far as it related to infringement of the registered design.
The USA
In the Californian proceedings where a number of patents (both design and invention software patents) were in issue, we were told the jury held thatSamsung
's products did not infringe the design patent corresponding to the registered design we are considering ("design patent" is the US terminology for what in Europe is called a "registered design"). The laws as to infringement differ somewhat.
The non-infringement appeal
Samsung
10.1, 8.9 and 7.7 are shown in Annex B. There is also a helpful same scale drawing of the side view of the registered design and the
Samsung
products which I reproduce below.
Article 10 Scope of protection
1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.
2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.
[33] The designs are assessed from the perspective of the informed user. The identity and attributes of the informed user have been discussed by the Court of Justice of the European Union in PepsiCo v Grupo Promer (C-281/10P) [2012] FSR 5 at paragraphs 53 to 59 and also in Grupo Promer v OHIM [2010] ECDR 7, (in the General Court from which PepsiCo was an appeal) and in Shenzhen Taiden v OHIM, case T-153/08, 22 June 2010, BAILII: [2010] EUECJ T-153/08
[34]Samsung
submitted that the following summary characterises the informed user. I accept it and have added cross-references to the cases mentioned:
He (or she) is a user of the product in which the design is intended to be incorporated, not a designer, technical expert, manufacturer or seller (PepsiCo paragraph 54 referring to Grupo Promer paragraph 62; Shenzen paragraph 46).
However, unlike the average consumer of trade mark law, he is particularly observant (PepsiCo paragraph 53);
He has knowledge of the design corpus and of the design features normally included in the designs existing in the sector concerned (PepsiCo paragraph 59 and also paragraph 54 referring to Grupo Promer paragraph 62);
He is interested in the products concerned and shows a relatively high degree of attention when he uses them (PepsiCo paragraph 59);
He 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 (PepsiCo paragraph 55).
[35] I would add that the informed user neither (a) merely perceives the designs as a whole and does not analyse details, nor (b) observes in detail minimal differences which may exist (PepsiCo paragraph 59).
Apple
accepted this summary of the law. Note that it includes reference to the Grupo Promer/Pepsico case, both before the General Court of the CJEU and before the CJEU itself (the case name is different but it is the same case). And note further that the CJEU expressly approved what the General Court had said about the informed user:
[53] It should be noted, first, that Regulation No 6/2002 does not define the concept of the 'informed user'. However, as the Advocate General correctly observed in points 43 and 44 of his Opinion, that concept must be understood as lying somewhere between that of the average consumer, applicable in trade mark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral expert, who is an expert with detailed technical expertise. Thus, the concept of the informed user may be understood as referring, not to a user of average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question.
[54] It must be held that it is indeed that intermediate formulation that was adopted by the General Court in paragraph 62 of the judgment under appeal. This is, moreover, illustrated by the conclusion drawn from that formulation by the General Court in paragraph 64 of the judgment under appeal, in identifying the informed user relevant in the present case as capable of being a child in the approximate age range of 5 to 10 or a marketing manager in a company that makes goods which are promoted by giving away 'pogs', 'rappers' or 'tazos'.
…
[56] Therefore, the General Court cannot reasonably be criticised as having erred in law on the ground that it assessed the overall impression produced by the designs in conflict without starting from the premise that an informed user would in all likelihood make a direct comparison of those designs.
Apple
did not before us suggest that the CJEU had altered the test as laid down by the General Court in Gruper Promo.
Apple
's first criticism of the Judge's approach in law was this: it submitted that the informed user, noting that the design was from 2004, would know and expect that advances in technology would make thinner tablets possible. Hence, it suggested, the informed user would give little significance to the thickness of the design as registered.
Apple
's point cuts both ways: if the informed user could foresee thinner tablets ere long so could
Apple
whom the informed user would take to have the same prevision. Thus the informed user would take the thickness to be a deliberate design choice by
Apple
.
Samsung
products had the trade mark
Samsung
on both their fronts and backs. It was submitted that the informed user would disregard the trade mark altogether as being a mere conventional addition to the design of the accused product.
Samsung
tablets was said in the context that
Apple
was contending that a feature of the registered design was "A flat transparent surface without any ornamentation covering the front face of the device up to the rim." He said:
[113] All three tablets are the same as far as feature (ii) is concerned. The front of eachSamsung
tablet has a tiny speaker grille and a tiny camera hole near the top edge and the name
Samsung
along the bottom edge.
[114] The very low degree of ornamentation is notable. However a difference is the clearly visible camera hole, speaker grille and the nameSamsung
on the front face.
Apple
submitted that the presence of branding was irrelevant …. However in the case before me, the unornamented nature of the front face is a significant aspect of the
Apple
design. The
Samsung
design is not unornamented. It is like the LG Flatron. I find that the presence of writing on the front of the tablet is a feature which the informed user will notice (as well as the grille and camera hole). The fact that the writing happens to be a trade mark is irrelevant. It is ornamentation of some sort. The extent to which the writing gives the tablet an orientation is addressed below.
[115] TheSamsung
tablets look very close to the
Apple
design as far as this feature is concerned but they are not absolutely identical as a result of a small degree of ornamentation.
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. The Judge was right to say that an informed user would give it appropriate weight - which in the overall assessment was slight. If the only difference between the registered design and the
Samsung
products was the presence of the trade mark, then things would have been different.
Samsung
trade mark on the back of the products.
Apple
had contended that a key feature was "a design of extreme simplicity without features which specify orientation." Given that contention the Judge can hardly have held that an informed user would completely disregard the trade marks both front and back which reduce simplicity a bit and do indicate orientation.
Samsung
. Views 0001.1 and 0001.3 show the front of the tablet. There is a rectangular dotted line shown.
Apple
submitted, and the Judge accepted, that the dotted line indicated a frame below a glass face - of the kind now familiar on all sorts of touch-screen devices.
Samsung
ran a complicated point based on the guidelines for examination. It submitted these would lead the informed user to conclude that the dotted lines were there to indicate that a feature was not protected: thus the fact that the
Samsung
device does have a "frame" is to be disregarded.
Samsung
's contention if there were no dotted lines the position would the same as if they were there.
[36] …the Judge has gone wrong in principle, see, e.g. Designers Guild v Russell Williams [2001] FSR 113 where Lord Hoffmann said, speaking of the closely analogous question of substantiality in relation to copyright infringement:
"because the decision involves the application of a not altogether precise legal standard to a combination of features of varying importance, I think that this falls within the class of case in which an appellate court should not reverse a judge's decision unless he has erred in principle."
It is noticeable that the Court of Justice adopted a similar, if not exactly the same, approach on the appeal to it in the Grupo Promer/Pepsico case, see e.g. [45].
what you cannot do, in my submission, is pick out features from the prior art and say, "Those articles have that feature, these articles have this feature, those articles have a third feature and, therefore, those features do not really count." If you do that, you immediately see that what you end up with is a situation in which you cannot have a design that has individual character if it happens to be made up from a novel and unique combination of features which are all individually known in the prior art.
[31] I start by reminding myself that what really matters is what the court can see with its own eyes (per Jacob LJ in Dyson v Vax [2012] FSR 4 at paragraphs 8 and 9, emphasising a passage from his judgment in Procter & Gamble v Reckitt Benckiser [2008] ECDR 3 (paragraphs 3 and 4)). The most important things are the registered design, the accused object and the prior art and the most important thing about each of these is what they look like.
[32] I also remind myself that while the exercise is a visual one, judgments have to be written and reasons necessarily expressed in words. However I must bear in mind that it is the overall impression which counts and not a verbalised list of features, see paragraph 46 of the judgment of Arnold J at first instance in Dyson v Vax [2010] FSR 39 and his reference there to the observations of Mann J in Rolawn Ltd v Turfmech Machinery Ltd [2008] EWHC 989 (Pat); [2008] RPC 27 (paragraph 123, 125 and 126). As Mann J said, "one of the problems with words is that it is hard to use them in this sphere in a way which avoids generalization. But what matters is visual appearance, and that is not really about generalities."
And, when he came to consider the overall impression of the
Apple
design having considered the various features of the design:
[178] Having gone through the various features individually it is necessary to pull it all together and consider the overall impression of theApple
design on an informed user.
Apple
can hardly complain about that since the Judge used the very list of seven features it had identified and invited him to use.
Samsung
did not contend that any of these features were "dictated solely by function." Such a feature is excluded from consideration by virtue of Art. 81. It means a feature which is purely functional, not to some degree chosen for the purpose of enhancing the product's visual appearance (see Lindner Recyclingtech v Franssons Verkstäder (Case R 690/2007-3 [2010] ECRD 1) and Arnold J in Dyson v Vax at [31].
Samsung
did submit, and the Judge accepted, that in some respects there is only a limited degree of freedom for any designer of a tablet computer, particularly in relation to the appearance of the front and rather more for the back.
Apple
:
(i) A rectangular, biaxially symmetrical slab with four evenly, slightly rounded corners;
(ii) A flat transparent surface without any ornamentation covering the entire front face of the device up to the rim;
(iii) A very thin rim of constant width, surrounding and flush with the front transparent surface;
(iv) A rectangular display screen surrounded by a plain border of generally constant width centred beneath the transparent surface.
I would add one other feature, that the edges of the front as shown on the representations are sharp. The sides are at 90o to the plane of the front face. So the thin rim has only its side visible on a front view.
[104] The rectangular display screen is totally banal and determined solely by function. Apart from that there are some other design constraints applicable to this feature but they do not account for the identity between theSamsung
tablets and the
Apple
design. These devices do not need to have biaxial symmetry nor be strictly rectangular. Nevertheless the significance of this identity is reduced by the fact that there are other designs in the design corpus which are very similar too.
[119] As before, this aspect of the design is the product of trade offs by the designer which include functional considerations but also include aesthetics. The designer can choose to have a flush rim or a bezel, can choose the rim thickness and whether it is constant around the device. Within a general overall constraint, the designer has significant aesthetic design freedom.
[126] I find that there is a degree of design constraint applicable here. The devices need some kind of border. The border need not be as described in feature (iv) but there are limits on design freedom.
The Judge added this:
[127] Irrespective of the matter of design freedom, to my eye, feature (iv) would strike the informed user as a rather common feature.
.png)
We were shown a physical example of this. The front is very close to that of the registered design, save that it departs from lack of orientation by a little LG logo. The back is rather different, as I shall come to.
.png)
.png)
Apple
design.
Apple
design has the 90o sharp edge to which I have referred. It matters because the informed user (indeed any user) would notice it. It gives the
Apple
design a sharp outline. The Judge called it a "crisp edge." The
Samsung
products are very different in relation to this and the sides generally. Before us
Apple
put in an exhibit (without complaint from Mr Carr) which illustrates this vividly because it has been enlarged and shows the side views of the registered design and the three accused products on the same scale:
.png)
By contrast with the crisp edge of the design, all three of the
Samsung
products have a side which curves a little outwards (so a bit bezel-like) before curving back in and under. And none of them have a vertical portion.
Apple
's features (v) and (vi) related to the back and sides of the design:
v) A substantially flat rear surface which curves upwards at the sides and comes to meet the front surface at a crisp outer edge;
vi) A thin profile, the impression of which is emphasised by (v) above.
[150] There is one serious design constraint applicable to this feature. The back needs to be generally flat. Apart from that there is considerable design freedom. The sides are very similar but these kinds of sides for products are not unusual. The informed user would recognise theApple
design in this respect as belonging to a familiar class of products with somewhat curved sides and a fairly crisp edge. The
Samsung
tablets are members of the same familiar class.
I cannot see how there could be any complaint about this. Actually to my eye what he said was if anything too favourable to
Apple
. For there is surely a real design difference between
Apple
's sharp edge, vertical side followed by a nearly circular arc of rounding and each of
Samsung
's products. Members of the same "family" perhaps, but cousins or second cousins at most.
Samsung
products are altogether busier in ways described by the Judge and can be seen in Annex B
[13] The backs of Galaxy Tabs 10.1 and 8.9 have whatSamsung
call a clutch purse feature. The backs have two colours. There is a gray/black combination and a gray/white combination. In both cases the gray region forms a rim around the whole back surface and has a thicker part along one side. This thicker part carries the camera. The main part of the back is either black or white as the case may be.
[14] The back of the Galaxy Tab 7.7 has three zones. The zones at the two ends are a smooth silvery gray coloured plastic. The central zone is a silvery gray metal with a rougher texture.
[173] The backs of the Galaxy tablets have prominent visual features. The Tab 10.1 and Tab 8.9 are the same. They have the so called "clutch purse" feature. It is a unique feature which distinguishes those tablets from theApple
design and from the design corpus. To my eye the clutch purse feature is a little less visually prominent in the white and gray version than in the black and gray version.
[174] The back of the Tab 7.7 is different from the backs of the other two. The Tab 7.7 is has a two tone arrangement. There is a visible difference in texture between the two end zones and the central zone. This is also different from theApple
design. In my judgment the difference between the Tab 7.7 and
Apple
is less significant than the difference between the "clutch purse" back designs on the other
Samsung
tablets and the
Apple
design. In other words the Tab 7.7 product is the closest to the
Apple
design.
Apple
's final feature, "Overall, a design of extreme simplicity without features which specify orientation", the Judge accepted that accurately applied to the registered design. As I have said he noted that the
Samsung
products did have features which specified orientation (notably the trade mark but also the camera and speaker) and the other matters which made them more complicated design-wise.
Samsung
products and the registered design produced were much the same.
Samsung
) the back was different. It looked like this:
.png)
The stand (shown in dark grey) could be optionally fitted to the silvered computer which could be hand-held. So it is irrelevant. But the lump on the back of the screen was integral with it. No doubt it contained functional electronics and the like. We were shown a physical example of the Flatron - it is much bigger than any of the
Samsung
products (or an iPad for that matter). Just about hand-holdable.
Samsung
products are as compared with the registered design (much thicker, even in the case of the 7.7, quite different curvatures, no sharp edge, and busier flat portion). True the Flatron is further away than the
Samsung
products because the
Samsung
products are proper tablets, but that does not mean that the
Samsung
products produce the same impression as the registered design, either as regards the backs or as a whole.
Samsung
products are all significantly and immediately noticeably thinner than the registered design. Even the 7.7 which, being the smallest is relatively thicker than the other two, is visually significantly thinner. Doubtless that is why it was contended, wrongly as I have said, that the informed user would pay little attention to thinness. I think the Judge would have been wrong if he had not held that the informed user would consider the relative thinness of the product as forming a significant part of the overall impression.
[190] The informed user's overall impression of each of theSamsung
Galaxy Tablets is the following. From the front they belong to the family which includes the
Apple
design; but the
Samsung
products are very thin, almost insubstantial members of that family with unusual details on the back. They do not have the same understated and extreme simplicity which is possessed by the
Apple
design. They are not as cool. The overall impression produced is different.
Apple
contends it would foreclose much of the market for tablet computers. Alterations in thickness, curvature of the sides, embellishment and so on would not escape its grasp. Legitimate competition by different designs would be stifled.
Apple
withdrew its claim for infringement in Germany, no German court appears even now to be seized of a claim for infringement. It is true that
Samsung
applied for declarations of non-infringement on the same day, 8th September 2011 in Spain, the Netherlands and England and Wales and there could be (but I think rather overtaken by events given that the trial and appeal are over here) a dispute about which case started first in point of time. After all there is now a Community-wide decision on the point, now affirmed on appeal. One would think that ought to put an end to all other litigation about it.
Apple
at least took the view that SEC would be liable for the subsidiary's actions. They were all one "undertaking". I use the word of EU law for this sort of situation.
[63] Broadly we think the principle in our courts - and indeed that in the courts of other member states - should be to try to follow the reasoning of an important decision in another country. Only if the court of one state is convinced that the reasoning of a court in another member state is erroneous should it depart from a point that has been authoritatively decided there. Increasingly that has become the practice in a number of countries, particularly in the important patent countries of France, Germany, Holland and England and Wales. Nowadays we refer to each other's decisions with a frequency which would have been hardly imaginable even twenty years ago. And we do try to be consistent where possible.
[64] The Judges of the patent courts of the various countries of Europe have thereby been able to create some degree of uniformity even though the European Commission and the politicians continue to struggle on the long, long road which one day will give Europe a common patent court.
The Publicity Appeal
Within seven days of the date of this Order [18th July 2012] [Apple
] shall at its own expense (a) post in a font size no smaller than Arial 11pt the notice specified in Schedule 1 to this order on the homepage of its UK website ... as specified in Schedule 1 to this Order, together with a hyperlink to the Judgment of HHJ Birss QC dated 9th July 2012, said notice and hyperlink to remain displayed on [
Apple
's] websites for a period of six months from the date of this order or until further order of the Court (b) publish in a font size no smaller than Arial 14pt the notice specified in Schedule 1 to this Order on a page earlier than page 6 in the Financial Times, the Daily Mail, The Guardian, Mobile Magazine and T3 magazine.
On 9th July 2012 the High Court of Justice of England and Wales ruled thatSamsung
Electronic (UK) Limited's Galaxy Tablet Computer, namely the Galaxy Tab 10.1, Tab 8.9 and Tab 7.7 do not infringe
Apple
's registered design No. 0000181607-0001. A copy of the full judgment of the High court is available on the following link [link given]
Apple
was immensely concerned about this order. Quite apart from the public grovel which it would involve, it had the further concern that this notice on its homepage would substantially interfere with the design and layout of its important marketing tool, its homepage. So
Apple
immediately applied to this court (Kitchin LJ and Sir Robin Jacob) for the order to be suspended pending this appeal.
[44] … Public humiliation formed no part of the judge's reasoning in deciding to make the order and I do not think it would be right to condemnApple
to such a fate before it has had an opportunity to argue its case on appeal.
37(1) The High Court may by order (whether interlocutory or final) grant an injunction … in all cases in which it appears to the court to be just and convenient."
The provision replaces identical legislation going back to at least the Judicature Acts of 1873-5. As is set out in Spry on Equitable Remedies, 7th Edn. (cited by
Apple
) the exercise of the power is not entirely unfettered. It is limited to inter alia "the enforcement of an equitable right" and "to restrain unconscionable conduct, such as conduct which would interfere with the due process of the court."
"…the jurisdiction to grant an injunction, unfettered by statute, should not be rigidly confined to exclusive categories by judicial decision. The court may grant an injunction against a party properly before it where this is required to avoid injustice, just as the statute provides and just as the Court of Chancery did before 1875. The court habitually grants injunctions in respect of certain types of conduct. But that does not mean that the situations in which injunctions may be granted are now set in stone for all time. The grant of Mareva injunctions itself gives the lie to this. As circumstances in the world change, so must the situations in which the courts may properly exercise their jurisdiction to grant injunctions. The exercise of the jurisdiction must be principled, but the criterion is injustice. Injustice is to be viewed and decided in the light of today's conditions and standards, not those of yester-year"
(1) That because it is a non-harmonised power (unlike the powers under the Enforcement Directive), it would be wrong to use the criteria for a s.37 injunction which might not be replicated elsewhere in Europe. He said:
When Sir Robin Jacob goes to his conferences in Europe to try to harmonise these arrangements, he wants achieve a common result. He does not want individual nation states going off and doing their own thing and judges in different courts possibly arriving at different results. That is a very laudable objective.
(That is a bit ironic givenApple
's application to the German court asking it to "do its own thing" after Judge Birss's final Community wide order).
(2) In any event the exercise of the power should be proportionate - and given the massive amount of publicity which this case had got - and would get - there was simply no need for an order requiringApple
to publicise its defeat.
Apple
itself caused here) then I see no reason why an injunction should not be granted to compel the party which caused the confusion and uncertainty to dispel it.
i) The pan-European injunction in respect of the 10.1 and later the 8.9 and 7.7 obtained ex parte by
Apple
on 4th August 2011 received massive publicity. Even though these injunctions as regards design infringement were later first limited to Germany and even later discharged altogether as regards the 8.9 and 10.1
Samsung
says that its market share of tablets in the UK plummeted from 10% to 1% and has only recovered to 3%. Lord Grabiner submitted that this has never been tested, but
Apple
have not presented any contrary evidence. I do not see why
Samsung
's evidence should not be accepted for present purposes. (Whether or not
Samsung
has any claim in the German courts for all the losses it has suffered as a result of preliminary measures which proved to be unjustified is obviously not a matter for us. I hope it does. If the position were the other way round, that the unjustified preliminary measures had been granted by the English and Welsh courts, the "injured" party would have a remedy under the cross-undertaking in damages which the English court normally requires as a condition of granting a preliminary measure which is not ultimately vindicated in a main trial).
ii) In Holland where
Apple
are suing
Samsung
in respect of patent infringement,
Apple
is seeking a publicity order which requires
Samsung
if it loses to give publicity to that on its website. So
Apple
consider that website publicity by the loser is proportionate. It may also be noted that
Apple
claimed a publicity order in general terms in its counterclaim in these proceedings, again showing it thought a publicity order appropriate.
iii) Following Judge Birss's "not as cool" judgment, which did receive massive publicity,
Apple
obtained the Oberlandesgericht order banning SEC from selling the 7.7 throughout Europe. That order received massive publicity in the press too.
iv)
Apple
took steps to enforce that injunction. Its German lawyers wrote a letter to SEC's lawyers on 14th August complaining that the 7.7 was being advertised on
Samsung
's websites throughout Europe. The complaint extended to the UK. It threatened German proceedings to punish
Samsung
for breaching the Oberlandesgericht order. It took the position that SEC was responsible for the actions of its subsidiaries. That was in clear conflict with Judge Birss's declaration.
v) The letter was followed by an application to the German Court for measures to enforce the injunction.
vi) On 17th September
Apple
backtracked but only partially. It wrote to
Samsung
's solicitors saying the application to the German court had been withdrawn, that no further steps in relation to breach of the order were contemplated and that "for the avoidance of doubt whatsoever, and subject to its being discharged or varied on appeal, our client will do nothing which is inconsistent with the effect of the declaration and order of Judge Birss."
Apple
had been doing and was continuing to do something inconsistent with the declaration of Judge Birss. It had obtained and was keeping in force the order of the Oberlandesgericht. That said the 7.7 could not be sold throughout Europe. Judge Birss's order said it could.
Apple
first offered to apply to the German court to have the effect of its order limited so as expressly not to apply to the UK. It became evident that was not good enough. Judge Birss's order (which at that point was assumed to be correct, we had not yet decided the appeal) applied throughout the EU because he was sitting as a Community Court. So eventually, but only in Lord Grabiner's reply speech,
Apple
accepted that the German injunction should be discharged altogether and undertook to this court forthwith to apply to the German court for it to be discharged.
Samsung
customer to make of it? On the one hand the media said
Samsung
had won, on the other the media were saying that
Apple
had a German Europe-wide injunction. Real commercial uncertainty was thereby created. A consumer might well think "I had better not buy a
Samsung
- maybe it's illegal and if I buy one it may not be supported". A customer (and I include its legal department) might well wonder whether, if it bought
Samsung
's 7.7 it might be in trouble before the German courts. Safest thing to do either way is not to buy.
Apple
registered design by the
Samsung
Galaxy 10.1, 8.9 and 7.7 tablets must have created. And doubtless the decision will be widely publicised. But media reports now, given the uncertainty created by the conflicting reports of the past, are not enough. Another lot of media reports, reporting more or less accurately that
Samsung
have not only finally won but been vindicated on appeal may not be enough to disperse all the fog. It is now necessary to make assurance doubly so.
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. The acknowledgement must come from the horse's mouth. Nothing short of that will be sure to do the job completely.
Apple
home web page, Mr Carr realistically recognised that
Apple
had a genuine interest in keeping it uncluttered. He proposed that instead of requiring the notice to be on the web page itself, it would be sufficient if there were a link provided from that to the notice. There are some links already provided. All that need be added is a link entitled "
Samsung
/
Apple
UK judgment." I think that would be appropriate and proportionate.
Apple
have agreed to obtain discharge of the order of the Oberlandesgericht I would have considered a longer period necessary.
On 9th July 2012 the High Court of Justice of England and Wales ruled thatSamsung
Electronic (UK) Limited's Galaxy Tablet Computers, namely the Galaxy Tab 10.1, Tab 8.9 and Tab 7.7 do not infringe
Apple
's registered design No. 0000181607-0001. A copy of the full judgment of the High court is available on the following link [link given].
That Judgment has effect throughout the European Union and was upheld by the Court of Appeal on ….. A copy of the Court of Appeal's judgment is available on the following link […]. There is no injunction in respect of the registered design in force anywhere in Europe.
Lord Justice Kitchin:
Lord Justice Longmore:
Annex A - The
Apple
registered design
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Annex B -
Samsung
tablets
Galaxy Tablet 10.1
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Samsung
Galaxy 8.9
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Samsung Galaxy Tab 7.7
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