Battle of the Tablets hits the UK - Samsung seeks declaration of non-infringement of Apple Registered Community Design

The IPKat has been following with great interest the Battle of the Tablets -  the on-going dispute between Apple and Samsung being played out in a number of jurisdictions both inside and outside Europe, in which, amongst other matters, Apple is asserting its Registered Community Design 000181607-0001 (details of the registration can be looked up here) against certain Samsung tablets (handheld computers).

Extensive details about each step of the battle to date can be obtained from Florian Mueller's FOSS blog.  However, in summary, the situation so far in Europe is:

In the Netherlands, in the preliminary proceedings at first instance and upon appeal, the Samsung product (the Galaxy 10.1) was held not to infringe the Apple Registered Community Design, and so no preliminary injunction was granted. In Germany, Apple was initially successful in obtaining a preliminary injunction on a pan-European basis, against both Samsung (Korea) and Samsung (Germany). However, the scope of the preliminary injunction was later reduced to Germany only, and, on appeal, although the preliminary injunction was maintained, the basis for the injunction was changed from the Registered Community Design to German unfair competition law.

The IPKat is an international feline, but his London-resident manifestations were feeling a little left out that this fascinating case was all being played out abroad. No longer!

News has now reached the IPKat of a decision of Mr Justice Mann of 4 April 2012.  This represents round one of the UK leg of the dispute.

The claimants in the case, Samsung (UK) and Samsung (Korea) were seeking, against the defendant, Apple Inc. (domiciled in the USA), a declaration of non-infringement of Apple's Registered Community Design by the Galaxy tablet.  The action also sought relief for unjustified threats of infringement proceedings allegedly made by Apple.

The decision so far is all about procedural matters.

Firstly, Mr Justice Mann considered that the UK court had no jurisdiction to hear the claim for a declaration of non-infringement in the UK in respect of Samsung (Korea). The reason is that neither Samsung (Korea) nor Apple is domiciled or has an establishment in the UK. However, the action could proceed in respect of Samsung (UK).  This was based on Article 82(1) of the Community Design Regulation:
“1. Subject to the provisions of this Regulation and to any provisions of the Convention on Jurisdiction and Enforcement applicable by virtue of Article 79, proceedings in respect of the actions and claims referred to in Article 81 shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in any Member State in which he has an establishment.
2. If the defendant is neither domiciled nor has an establishment in any of the Member States, such proceedings shall be brought in the courts of the Member State in which the plaintiff is domiciled or, if he is not domiciled in any of the Member States, in any Member State in which he has an establishment.
3. If neither the defendant nor the plaintiff is so domiciled or has such an establishment, such proceedings shall be brought in the courts of the Member State where the Office has its seat …”
(Merpel notes here that while the English legal system has abolished the term "Plaintiff" and replaced it with "Claimant", the Regulation sticks resolutely to the old wording).

Samsung's argument seems to have been that, since Apple had sought a pan-European injunction in Germany against Samsung (Korea), then Apple could not oppose the jurisdiction of the UK Courts in respect of Samsung (Korea), by way of a kind of estoppel reaching from Germany to the UK.  This was never likely to succeed, and Mann J was having none of it.

The next issue to be addressed was that Apple argued that the UK action should be stayed pending the resolution of an outstanding invalidity action at OHIM which was begun by Samsung on 9 August 2011. However Article 91 of the Community Design Regulation states:
A Community design court hearing an action referred to in Article 81, other than an action for a declaration of non-infringement, shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties, or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the Community design is already in issue before another Community design court on account of a counterclaim or, in the case of a registered Community design, where an application for a declaration of invalidity has already been filed at the Office.
Apple could only succeed if the clear wording "other than an action for a declaration of non-infringement" was disregarded. Therefore, this argument, as would be expected, failed.  Apple argued that the intention was clearly that OHIM should have exclusive jurisdiction over validity, and that validity issues could not be completely separated from (non)-infringement issues.  However Mann J found that there was no such exclusive jurisdiction.  Article 24 (1) of the Regulation provides:
A registered Community design shall be declared invalid on application to the Office … or by a Community design court on the basis of a counterclaim in infringement proceedings.
Taken in combination with Article 84(4):
The validity of a Community design may not be put in issue in an action for a declaration of non-infringement.
Mr Justice Mann concluded that the actual position was:
So validity can be raised in a national court if infringement proceedings are started, which is logical, but if a claimant wishes to take a validity point without being sued first, that has to be done in OHIM. Otherwise a claimant with a potentially infringing product has to assume validity and try to establish that his product does not infringe.
[Merpel at this point interjects:  this means that we have bifurcation in the case of a declaration of non-infringement, but not in the case of infringement.  As devotees of the Amerikat's posts on the negotiations towards a unitary European patent will know, in the UK we generally consider that bifurcation is a VERY BAD THING.]

Mann J therefore concluded:
The exception in Article 91 means what it says. Actions for declaration for non-infringement can continue even if validity is already in issue in OHIM.
So the proceedings for the declaration of non-infringement by Samsung (UK) were not stayed.  They were ordered to proceed on an expedited basis.

How do I get the touchscreen
to work, wonders Merpel
And finally to the issue of groundless threats.  The groundless threats action, although in relation to a Registered Community Design, was based on provisions of English law (contained in the Community Design Regulations 2005).  They were therefore subject, not to the jurisdictional considerations of the Regulation discussed above, but to English law on service.  In particular, in order to validly begin the threats action, English law relating to service outside the jurisdiction needed to be followed. Among other things, this requires a "good arguable case" in relation to the threats action.  Apple naturally argued that there was no good arguable case, and that they had made no threat of instigating against Samsung proceedings for infringement of their Registered Community Design.

Mr Justice Mann considered that no action taken by Apple so far amounted to a threat of infringement proceedings in the UK.  He therefore considered that there was no such "good arguable case" and that the service outside the jurisdiction was held to be invalid.

This is so far at a very preliminary stage only, and the IPKat much looks forward to the substantive hearing and decision on the merits.  The surviving issue in the action, taking the above decisions into consideration (and subject to any appeal), is a declaration of non-infringement of Apple's Registered Community Design by Samsung (UK).  The decision ends with an order to expedite the proceedings so that the case should be heard in June 2012.

Granting expedition (although not as much as Samsung requested -- the request was for the case to be heard in April), Mann J observed:
The dispute in this case needs resolution while the designs of the product are still current, and in the context of a Europe-wide dispute about these tablet computers it is necessary to start to get some (or some more) final decisions in place to produce certainty and remove public and litigation posturing. I think that the claimants have made out a case for expedition in this case, and that that overrides Apple’s objections (save as to timing) and is sufficient to justify the diversion of court resources for the period in question.
[Is "expedition" really the word, asks Merpel.  It's what the judgment says, insists the IPKat.  But it is hardly as though they are going on safari, retorts Merpel]

The IPKat will keep his dear readers posted.
Battle of the Tablets hits the UK - Samsung seeks declaration of non-infringement of Apple Registered Community Design Battle of the Tablets hits the UK - Samsung seeks declaration of non-infringement of Apple Registered Community Design Reviewed by Darren Smyth on Wednesday, April 04, 2012 Rating: 5


  1. I am struggling to imagine what design right can exist in an ipad. The screen of my aged laptop looks remarkably similar to an ipad, except it is bigger and far more useful.

  2. It's amazing how quickly everyone seems to have forgotten that the iPad is only a couple of years old. And now the question is being asked what's so special about its shape.

    Answer: The iPad is the first tablet computer that has proved to be comercially successful (beyond the wildest expectations even of the late Steve Jobs, I guess). And I would say its shape has been an important contriburoy factor to that success. If, now that Apple has established what a tablet should look like, Apple cannot, protect that shape, then what good are registered (or even unregistered) designs in the first place? And there is always that question why, if there is nothing special about the exterior of the iPad, Samsung felt the need for making what to the casual observer look like an almost slavish copy?

    @anonymous of 4 April 9.53 PM

    The iPad may look a little like the screen of your aged laptop, but I guess your laptop also has body with keys, on/off switch, etc., and a hinge where the screen meets the body.

    And since one can assume, given the content of your comment that you don't use one of these new-fangled devices, let me tell you that my iPad has turned out to be far more useful than I had thought possible when I bought it purely and simply as a toy (and for no other purpose).

  3. I'm pleased that the Kat's emailed criticism of Mann J's vocabulary has been corrected, so that "exepdition" is now "expedition", and that "judgement" is now "judgment".

    We've all been there...

  4. The preface to my Concise Oxford Dictionary [5th Edition: 1964]cites "judg(e)ment" as an example of a class of words that can be spelled either with or without the "e" that is preferred in the OED itself. Mind you, this information appears in the preface carried over from the first edition of 1911. British English evidently underwent some significant changes in spelling practice in the Late-Victorian era, and many spellings that now strike the British reader as Americanisms (such as "color", "tire"), are simply retention by the USA of the original British English spelling practice. "American" spelling is very apparent in early Victorian UK patent specifications.

  5. Eric:

    I would urge you to look at any of the Star Trek- The Next Generation episodes - the screen based interactive device (without keyboard) has been featured there.

    Since this is a design patent, novelty is destroyed.

    Would you care to answer now??

  6. Almost Emeritus,

    While it is true that some aspects of the English language typically felt to be "American" are actually artifacts of previous British idioms, it's a shame you chose "colour" as an example, given that this apelling derives from the French and was only sanitised for the American eye to the "-or" with the advent of Webster's dictionary. The British spelling has always been "-our" - see Dr Johnson's dictionary of 1755

  7. Eric, you are mixing up exciting, new-fangled, extremely popular consumer product with design right as protected by statute. You are also jumping on the 'anyone who doesn't go to bed with all of Apple's products and have more fun than they would with Carmen Electra (or david Hasselhoff depending on preference) must be a witch or otherwise of the Devil's sporn' bandwagon. I am not anti-Apple, but I am pro-legitimate IP rights.

    The ipad is a rectangular device having a screen on one side and a back on the other. Design right would usually subsist in the novel features present in the device subject to exclusion for features solely dictated by function. The screen is flat and rectangular as in any other LCD device. My laptop screen is currently detached from the laptop, hence it has no buttons or hinge. there are also penty of old laptop computers out there where the screen rotates to form a tablet - just happen to be as thick as a standard laptop.

    Also, try looking at all those fancy remote controls for home stereos, lights and curtains that all predate the ipad. My old Satnav also has the same design features.

    Is the ipad design novel because it doesn't have wheels, bmpers and windscreen wipers like my car?

    Mr Jobs (RIP) was many things but he was not the 2nd coming with new tablets from the mountain. rectangular tablets with information viewable on one side and easily portable down a mountain? Maybe there is a connection.


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