In October 2012, the UK Court of Appeal rejected an appeal from the High Court of Justice by Apple Inc. to set aside the two judgments given by HHJ Birss, Q.C., in favor of Samsung (meaning Samsung Electronics (UK) Ltd, the UK subsidiary of the Korean firm Samsung Electronics Co. Ltd (SEC), or the entire Samsung Group). Samsung Electronics (UK) Ltd v. Apple Inc,  EWCA Civ 1339 (Oct. 18, 2012). The High Court’s first judgment ( EWHC 1882 (Pat) (July 9, 2012)) was that the Samsung Galaxy tablet computers at issue did not infringe Apple’s registered Community Design (No. 00181607-000), intended to be incorporated in a handheld computer. The second judgment ( EWHC 2049 (Pat) (July 18, 2012)) ordered Apple to publicize the fact that it had lost.
Appeal of the Non-infringement Judgment
Sir Robin Jacob (with whom Lord Justices Longmore and Kitchin were in agreement) made some specific observations in response to Apple’s criticism of the High Court’s approach. One of these concerned the use of the Samsung trademark on the Samsung tablet. The Court of Appeal disagreed with Apple that the informed user would disregard the Samsung trademark as being a mere conventional addition to the design of the product. The Court agreed with the High Court that the differences between the registered design and the Samsung tablet (the front of the tablet had a speaker grill, camera hole and the mark SAMSUNG on it, whereas the registered design was “one of extreme simplicity without features which specify orientation”) would not have been disregarded by the informed user. Apple’s appeal was dismissed.
Conflict Between European Judgments
On July 24, 2012, after the High Court judgments, the German Court of Appeal (Oberlandesgericht, or OLG) held, on a preliminary basis, that Samsung’s 7.7 tablet infringed Apple’s registered design and granted a pan-European injunction against SEC and its Germany subsidiary preventing further sales.
The UK Court of Appeal observed that the OLG did not have jurisdiction to grant this interim relief, for a number of reasons:
• The German court was not “first seized” of the infringement claim: the Community-wide decision, given in the English court, should have put an end to all other litigation.
• The German court’s view, that it had jurisdiction because the party before it was SEC whereas the party before the UK court was SEC’s UK subsidiary, was “quite unrealistic commercially,” as they were all one “undertaking.”
• The OLG’s reasoning on the merits was too sparse. In particular, the General Court’s decision in Grupo Promer v. OHIM (Case T-9/07 (GC Mar. 18, 2010)), which was affirmed on appeal (PepsiCo v. Grupo Promer, Case C-281/10P (CJEU Oct. 20, 2011)), was not “outdated,” and “it was wrong in law to say that the positioning of a trade mark was irrelevant where it interfered with one of the key features of the design (simplicity and plainness).”
Appeal of the Publicity Order
The second High Court judgment ordered, under the inherent jurisdiction of the court, that Apple post a notice in newspapers and on its website stating that the relevant Samsung tablets did not infringe Apple’s registered Community Design. Apple appealed this order.
Summarizing the factual position, the Court of Appeal took the following into account:
• The pan-European injunctions obtained by Apple (in respect of Samsung tablets 10.1, 8.9 and 7.7), which received massive publicity. Even though these injunctions were first limited to Germany and then later discharged (in respect of the 8.9 and 10.1 tablets), Samsung’s market share of tablets in the United Kingdom had been affected, dropping from 10 percent to 1 percent.
• That Apple was seeking a publicity order against Samsung in the Netherlands and had included a claim for a publicity order in its counterclaim in the UK proceedings. Apple therefore considered an order for website publicity by the loser to be appropriate.
• That, following the High Court ’s decision, Apple obtained an order from the OLG banning SEC from selling the 7.7 tablet throughout Europe, which received huge publicity.
• That Apple had initially taken steps to enforce the order of the OLG, writing a letter to SEC’s lawyers complaining of the advertising of the 7.7 tablet and taking the position that SEC was responsible for the actions of its subsidiaries. This was in clear conflict with the High Court’s declaration.
While at different stages of the proceedings an order may have been unnecessary, such an order was necessary now. Real commercial uncertainty had been created by the decision of the OLG: “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.” The Court of Appeal therefore ruled that Apple, having caused this confusion, must now make the position clear.
The UK Court of Appeal therefore affirmed the High Court’s order in respect of the newspaper notices and ordered that a link to a notice appear on the home page of Apple’s website. This link was required to be “live” for one month from the date of the order.
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