For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Wednesday, 18 July 2012

Stop press! There's a non-cool non-infringer about

... if you're Apple, that is
The IPKat has just heard that, following its unsuccessful infringement action against Samsung, iPad creator Apple Inc has been ordered to publish a notice on its website -- and in British newspapers [if anyone still reads them ...] -- alerting people to a ruling that Samsung Electronics did NOT copy Apple's Community registered design for the iPad (on which, see earlier IPKat post here). According to the Bloomberg report:
"The notice should outline the July 9 London court decision that Samsung’s Galaxy tablets don’t infringe Apple’s registered designs, [the IPKat's influential friend] Judge Colin Birss said. It should be posted on Apple’s UK website for six months and published in several newspapers and magazines to correct the damaging impression the South Korea-based company was copying Apple’s product ... The order means Apple will have to publish “an advertisement” for Samsung, and is prejudicial to the company, Richard Hacon, a lawyer representing Cupertino, California-based Apple, told the court. “No company likes to refer to a rival on its website.”

Judge Birss said in his July 6 ruling that Samsung’s tablets were unlikely to be confused with the iPad because they are “not as cool.” ...

Judge Birss didn’t grant Samsung’s bid for an injunction blocking Apple from making public statements that the Galaxy infringed its design rights.

“They are entitled to their opinion that the judgment is not correct,” he said ...".
The IPKat hasn't seen the order in question, but he recalls that the IP Enforcement Directive (2004/48) provides as follows:
"Article 15

Publication of judicial decisions

Member States shall ensure that, in legal proceedings instituted for infringement of an intellectual property right, the judicial authorities may order, at the request of the applicant and at the expense of the infringer, appropriate measures for the dissemination of the information concerning the decision, including displaying the decision and publishing it in full or in part. Member States may provide for other additional publicity measures which are appropriate to the particular circumstances, including prominent advertising".
It is generally assumed that Article 15 is there in order to proclaim the liability of infringers, not the innocence of non-infringers -- and the wording doesn't quite seem to fit the bill.

A katpat goes to Colin Fowler (Rouse Legal) for tipping the kats off to this exciting morsel of news.

5 comments:

Eric said...

Bad for Apple? Not necessarily so:

Notice: The Samsung Galaxy tablet does not infringe Apple's registered design for the iPad because, as the trial judge said, "it is not as cool"

The Choice is yours ...

Anonymous said...

Is anyone aware of such an order having been made in similar circumstances previously - i.e. against the losing party in a declaration of non infringement?

Of course such orders have been made against infringers, but my impression was that even then it was by no means a foregone conclusion that the judge would agree.

Annsley Merelle Ward said...

Publication of judgments is provided for under CPR PD63 and it is usually something you find on the Claim Form - but again the terms of the power is in reference to when an IP right has been infringed (as what happened in the Cipriani case).

http://www.justice.gov.uk/courts/procedure-rules/civil/rules/pd_part63#IDAMYWJC


It seems that the Court has taken the declaration of non-infringement and progressed it into a publication of a declaration of non-infringement power. An analogy can be drawn with what happens when a statement is read in open court (and then subsequently published) in libel actions - i.e. someone said you did something arguably wrong and when the court finds that you didn't do the alleged wrong you should be able to publicly correct that incorrect statement by way of a defendant reading out a statement in open court and by publishing the statement in a prominent location in in its publication.

I still cannot find the inherent power of the Court to order this unless its under its general case management powers....

Darren Smyth said...

Full text of decision now available on BAILII:
http://www.bailii.org/ew/cases/EWHC/Patents/2012/2049.html

Anonymous said...

Does anybody know the address of the website where Apple will have to publish the notice? It doesn't seem to be on apple.co.uk.

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