News

January 2012

The European Community design dispute between Apple and Samsung

The ongoing Community design IP dispute between Apple and Samsung has been a popular topic in the news recently. We have been following the developments closely and give a brief summary of the dispute below.

Background

Apple first obtained a Community design registration for a tablet computer in 2004.

Apple subsequently launched the “iPad” tablet computer in 2010. Samsung planned to launch its competing tablet device, the “Galaxy Tab 10.1”, in Europe during August 2011.

Ahead of the Galaxy Tab’s release, Apple argued that Samsung’s device infringed its Community design. Apple applied to a German court for a Community-wide preliminary injunction against both the German and Korean divisions of Samsung. If granted, this would temporarily prevent the sale of the Galaxy Tab before the court made a final decision on infringement.

The German court granted the preliminary injunction against both divisions of Samsung, valid across the European Community, excluding the Netherlands.

Samsung objected to the preliminary injunction on the grounds that:
        the Galaxy Tab did not infringe;
        the design registration was invalid; and
        the German court did not have jurisdiction outside Germany.

In considering the validity and infringement, the German court’s analysis was that Apple’s design is characterised by:

  1. an overall rectangular shape with four evenly-rounded corners;
  2. a flat clear surface covering the front of the device that is without any ornamentation;
  3. a rectangular delineation under the clear surface, equidistant to all edges,
  4. a thin rim surrounding the front surface;
  5. a backside with rounded corners and edges bent toward to the top; and
  6. a thin form factor.
The judge concluded that Apple’s design characteristics lay in its minimalism, and that the simple design “characterizes the asserted Community design in a particular way”. The court found that the Galaxy Tab shared the distinguishing features of Apple’s design and thus infringed.

The judge decided that the prior devices cited by Samsung were clearly distinguishable from Apple’s Community design, lacking the simple “puristic elegance” of the Apple design. The judge concluded that those prior devices did not invalidate the registration.

The German court upheld the preliminary injunction against the German division of Samsung but not against the Korean division. Samsung is currently seeking an expedited appeal.

The Netherlands

The German decision did not extend to the Netherlands because Apple had commenced separate proceedings there.

In contrast to the German court, the Dutch court decided that Apple’s Community design registration was too generic to offer broad protection and that the prior devices might invalidate it. As a result, the Dutch court did not award a preliminary injunction.

We await the final decision from the Dutch court on infringement and validity.

Samsung’s Response

Samsung has since launched a redesigned Galaxy Tab, the “10.1N”. Apple has filed a preliminary injunction request in Germany to ban sales of Samsung’s redesigned Galaxy Tab. The case is still pending.

Summary

The Apple v Samsung dispute shows how invaluable design protection can be in frustrating competitors’ activities, for even a seemingly simple design.

It also shows that some courts are still willing to grant EC-wide injunctions, although we wait to see how many other courts are willing to uphold them.

If you would like any further information on the dispute and any future developments, please do not hesitate to contact James Cornford here at Forresters.