The Authors' Take - Final decision from a UK Community Design Court clarifies how to interpret a registered design

Final decision from a UK Community Design Court clarifies how to interpret a registered design

by Darren Smyth

The decision in Rothy's Inc v Giesswein Walkwaren AG [2020] EWHC 3391 (IPEC) (16 December 2020) relates to a design for ballerina shoes, which an informal, women's slip-on shoe, with a relatively thin, flexible sole and a wide, low heel. This decision is the last judgment handed down by a UK court acting as a Community Design Court. David Stone, sitting as a Deputy High Court Judge in the Intellectual Property Enterprise Court, was faced with the task of construing what was protected as the Registered Community Design.

The key feature of the shoe which the Claimant developed was that the upper was made of knitted yarn made from recycled plastic. However, the Defendant denied that the cross-hatching in the images of the designs indicated a knitted meshwork fabric.

In determining what constitutes the claimed design, the judge rejected the submission of the Claimant that he should take into account a shoe made to the design. This would clearly risk introducing features extraneous to those claimed in the registration. As the judge pointed out, whilst superficially attractive, this argument is circular – to determine if the proffered shoe is indeed a shoe made to the design, one first needs to assess what the registration means.

The judge also rejected the submission of the Claimant that he should consider the description of the claimed design in the US design patent application from which priority was claimed. It cannot be correct to import subject matter from a priority application in this manner, in particular when the effect would be to circumvent Article 36(6) of the Community Design Regulation which stipulates that the description of a RCD does not affect the scope of protection.

This leaves only the images of the registered design to define what is claimed in the registration. The judge scrutinised closeups of the images on the EU IPO website, and concluded that the patterning shown on the upper depicts a knitted fabric. This led to the conclusion that the RCD possessed individual character, as neither of the pleaded prior designs had knitted uppers (both were suede).

The differences between the Defendant’s shoe and what the judge construed as being protected by the RCD (such as a tab at the back of the shoe and a decorative button) were held to be minor, so the Defendant’s shoe was held to infringe the RCD.

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

Samsung v Apple: How does the judge become an ‘informed user’?

Author: Darren Smyth (EIP, London)

Samsung Electronics (UK) Limited v Apple Inc. [2012] EWHC 1882 (Pat), Patents Court, England and Wales, 9 July 2012

Journal of Intellectual Property Law & Practice (2012), doi: 10.1093/jiplp/jps142, first published online: 17 September 2012

Judge Birss QC has decided, despite initially being struck by their similarity, that three Samsung Galaxy Tab tablet computer designs did not infringe Apple's Community Registered Design No 000181607-0001.

Legal context

According to Article 10 of the Community Design Regulation (Council Regulation 6/2002):

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. Moreover, Recital 14 of the Regulation, referring to the same test as for scope of protection, but in the context of individual character, states: The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design.

How then should the judge don the spectacles of the informed user (Procter & Gamble v Reckitt Benckiser [2007] EWCA Civ 936) and judge whether a different overall impression is produced?

Facts

Apple iPad

In response to Apple's allegations of infringement, Samsung brought proceedings in the United Kingdom for a declaration that three Samsung tablet computers, namely the Tab 10.1, Tab 8.9 and Tab 7.7, did not infringe Apple's tablet computer design. Apple counterclaimed for infringement, alleging that seven features were reproduced, namely:

• A rectangular, biaxially symmetrical slab with four evenly, slightly rounded corners. 

• A flat transparent surface without any ornamentation covering the entire front of the device up to the rim. 

• A very thin rim of constant width, surrounding and flush with the front transparent surface. 

• A rectangular display screen surrounded by a plain border of generally constant width centred beneath the transparent surface. 

• A substantially flat rear surface which curves upwards at the sides and comes to meet the front surface at a crisp outer edge. 

• A thin profile, the impression of which is emphasized by (5) above. 

• Overall, a design of extreme simplicity without features which specify orientation.

Samsung Galaxy

Expert evidence was adduced about whether any features of the design were solely dictated by technical function and therefore excluded from design protection altogether under Article 8(1) of the Regulation, and also the degree of freedom of the designer under Article 10 of the Regulation. Further, over 50 designs were put forward by Samsung as evidence of the existing design corpus. The judge considered each of the seven features in relation to the prior designs, and in relation to the expert evidence on design freedom.

The judge found that the first four features were present in the Samsung products, but gave them lesser significance because they were present in the design corpus.

The fifth feature was considered to be present only as a feature of a class of products that would be familiar to the informed user.

The last two features were considered to represent points of difference between the Samsung products and the RCD. The Samsung products were thinner, and they had ornamentation on the back that was absent from the RCD.

The judge concluded:

Are these two differences enough to overcome the similarity at the front and the similarity in overall shape? Apple submitted that the front face and overall shape are what matters because the informed user will principally spend his time looking at the front face and holding the object in his hand. I do not regard the overall shape as very significant but there is a very obvious visual similarity at the front. In my judgment the key to this case is the strength or significance of that similarity. As I have said the significance of the near identity of the front surfaces of these products is reduced to a degree by the existence of similar fronts in the design corpus. The question is—to what degree?

And:

The informed user's overall impression of each of the Samsung 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.

He therefore concluded that they did not infringe.

Analysis

The judge noted that ‘Community design infringement cases are supposed to be simple. The material presented in this case is complex and detailed.’ Therefore, although ‘the end result is a judgment much longer than should be necessary’, he specifically stated: ‘Given the commercial importance of this dispute I do not criticise the parties for putting it forward in this way.’ In assessing the scope of protection, the judge followed the approach advocated by Apple, and not resisted by Samsung, reading the requirements of Recital 14 into the test set out in Article 10 of the Regulation, and proceeded in the following manner:

Although the outcome depends on overall impression, as a practical matter the design must be broken down into features. Each feature needs to be considered in order to give it appropriate significance or weight. Each feature needs to be considered in three respects. A feature dictated solely by function is to be disregarded. As long as it is not disregarded, each feature must be considered against the design corpus and it must be considered from the point of view of design freedom.

Since this case is concerned with infringement only and not validity, the list of features is a list of similarities said to exist between the design and the alleged infringement. Aside from considering similarities, the differences between the design and the alleged infringement also need to be addressed and weighted. For all the similarities and differences, the weighting exercise is concerned with assessing the significance of the similarity to the informed user. Things which look the same because all the products in the class look that way do not excite the informed user's interest to the same extent as unusual features.

Taking into account the similarities and differences, appropriately weighted, the court can decide whether the alleged infringement produces a different overall impression on the informed user from that produced by the registered design. Each of the seven features was therefore analysed in this way, leading to the final result.

The judge additionally commented in the antepenultimate paragraph of the judgment: This case illustrates the importance of properly taking into account the informed user's knowledge and experience of the design corpus. When I first saw the Samsung products in this case I was struck by how similar they look to the Apple design when they are resting on a table. They look similar because they both have the same front screen. It stands out. However to the informed user (which at that stage I was not) these screens do not stand out to anything like the same extent. The front view of the Apple design takes its place amongst its kindred prior art.

This indicates that the expert evidence, and the mass of prior designs, is not an optional add-on that the parties can indulge in if they wish to devote extra resources to a commercially important case, but an essential step in educating the judge into an informed user. This is the more remarkable given that validity was not at issue in the proceedings, but only infringement.

This approach stands in marked contrast to the approach indicated by Jacob LJ in Procter & Gamble v Reckitt Benckiser, and again in Dyson Limited v Vax Limited [2011] EWCA Civ 1206:

The most important things in a case about registered designs are: 

• the registered design; 

• the accused object; 

• the prior art.

And the most important thing about each of these is what they look like.

And:

It follows that a place for evidence is very limited indeed. By and large it should be possible to decide a registered design case in a few hours.

These remarks recommend that the judge should simply conduct a visual comparison, without lengthy consideration of the design corpus, or detailed expert evidence on the degree of design freedom. It remains to be seen as to how these approaches are to be reconciled in subsequent cases.

Practical significance

This judgment suggests that, in order to judge the scope of a Community design right, it will be necessary as a matter of course, and not only as an exceptional matter, to provide evidence of the design corpus and expert evidence on the degree of freedom of the designer in order that the judge can become an informed user.

Euro-injunction mechanism in Community designs: Samsung Galaxy Tab European ban partially lifted

Author: Séverine Mas, avocate

Apple Inc. v Samsung Electronics GmbH and Samsung Electronics Co. Ltd, Düsseldorf Tribunal of first instance (Landgericht), Germany, Press Release No 013/2011 of 9 September 2011 concerning case No 14 c O 194/11

Journal of Intellectual Property Law & Practice (2011) doi: 10.1093/jiplp/jpr181, first published online: November 23, 2011

The 14th Civil Division of the Düsseldorf Tribunal of first instance confirmed an interim decision preventing the German firm Samsung Electronics GmbH from selling the Samsung Galaxy Tab 10.1 in the whole of the European Union, on account of a potential infringement of a Community design registered by Apple. The ban was, however, restricted to the German territory for sales by Samsung Electronics Co. Ltd, based in South Korea.

Legal context

The court examined its authority to grant a European injunction in the case of a Community design infringement, in application of Articles 82 and 83 of the Community Designs Regulation (EC Regulation 6/2002), following two interim decisions rendered on 9 and 16 August by the same court.

Facts

In a preliminary injunction (9 August 2011), the Düsseldorf court of first instance prohibited the sale, import, export, and interim storage of the Samsung Galaxy Tab 10.1 in the whole of the EU except in the Netherlands, on the grounds that it potentially infringes Apple's Community design rights (Community design 000181607 for the iPad product).

However, the President of the Düsseldorf court announced on 16 August that execution of that decision was suspended. The announcement stated that the court did not have jurisdiction to grant a European-wide injunction forbidding a company based outside the European Union to commercialize its products in the EU. The ground stated for the suspension was that the court was asked to examine an interim matter and thus did not have such far-reaching powers.

The decision for the appeal filed by Samsung against the 9 August injunction, following the court hearing of 25 August, was rendered on 9 September.

The Landgericht maintained the injunction against Samsung Electronics GmbH, a German company, confirming the prohibition of selling the Samsung Galaxy Tab 10.1 in the EU, and in particular, the prohibition of producing, offering for sale, commercializing, importing, exporting, or storing the product for these purposes.

With regard to Samsung Electronics Co. Ltd, based in South Korea, the court has, however, limited the ban to the German territory. The European-wide ban was lifted.

Analysis

Competition is fierce in the tablet PC market, and registrations of IP rights are some means of obtaining a competitive advantage. The current context is part of a legal strategy between Apple products and Android-based smartphones and tablet PCs (Android is an open-source operating system created by Google, used by several manufacturers including Samsung).

The mechanism of the European injunction in favour of Community design owners allows Community design courts to prohibit the sale of a product potentially infringing a Community design, in the whole European Union territory, without examining the grounds for the claims (ie the validity of the design registered). As the German decision has not yet been published, we assume that the injunction was based on Article 85 of the Community Designs Regulation. The Regulation on Community designs requires that in proceedings for an alleged infringement action, the courts treat the Community design as valid (Article 85 of the Regulation). Validity can only be challenged through a counterclaim for a declaration of invalidity, or by way of counterclaim in so far as the defendant claims that the Community design could be declared invalid on account of an earlier national design right belonging to the defendant.

The Düsseldorf Landgericht's summary judgment of 9 August is an exceptional decision, given its scope and potential consequences. We should, however, bear in mind that the tribunal had no choice but to consider the design as valid. Acting on an interim matter, the court could not examine the grounds of the claims. It could only examine the existence of IP rights on which the claims were based.

This leads on to the validity of the Community design. Apple's registered Community design may be seen as so basic that the ‘individual character’ condition of Article 6 may be absent. In addition, the shape of the design can be considered being dictated by the functionality of a tablet PC (Figure 1).

Apple's registered design for a handheld computer

Design law requires that the form of a design not be solely dictated by its technical function (Article 8 of the Regulation). It is therefore questionable that a simple rectangular, flat geometric shape be registered as a Community design for a tablet PC. The shape in itself could be seen as being dictated by the functionality of the apparatus, which is to provide a tactile screen for interaction with the user.

In conclusion, it is possible that the design may be declared invalid in the future. The legal issue at stake would then fall under the realms of unfair competition rather than of industrial property rights.

Practical significance

A similar provision relating to trade marks allows national courts to grant Euro-injunctions in favour of trade mark owners (Article 98 of the Community Trade Mark Regulation). The extent of jurisdiction on Community design infringement depends on the international jurisdiction criteria stated in Article 82 of the Community Designs Regulation. Article 82(1) states that infringement proceedings

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.

Article 85(2) states that 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.

If the claimant or the defendant is domiciled or has an establishment in the Member State, the Community Design Court will have authority to grant a Euro-injunction based upon the Community Design Regulation, Article 83(1). If, however, the court is acting only so as to stop potential infringement in the Member State in which the act of infringement has been committed or is going to be committed—the forum loci delicti (Article 82(5))—it will not have the authority to grant a Euro-injunction (Article 83(2)).

In the present case, the defendants were Samsung Electronics GmbH (based near Frankfurt) and Samsung Electronics Co. Ltd (headquartered in South Korea). The reasoning behind the suspension of the execution of the original 9 August decision is that the court only had jurisdiction to grant a Euro-injunction towards Samsung's German defendant. With regard to Samsung Korea, the company is not viewed as an ‘establishment’ in the sense of the Regulation. This may be due to a problem of translation of the European Regulation into German. In the German version of the text, the term ‘establishment’ is translated as ‘Niederlassung’. This can mean either an independent company or a subsidiary.

In order for Article 82(1) to apply, Samsung Electronics GmbH would need to be considered a subsidiary of Samsung Electronics Co. Ltd (South Korea). This seems not to be the case. Due to the plaintiff's headquarters being situated in California, Article 82(2) could not be applied either.

The appropriate form of action in order to obtain a Euro-injunction would have been for Apple Inc. to have applied to the courts of Alicante in Spain, where the OAMI is situated (Article 82(3)).

Industrial property offices have a great responsibility in maintaining a healthy market, by being cautious before granting industrial property rights. The combination of Articles 83 and 85 of the Community Design Regulation creates a powerful instrument for corporations. Aggressive registration of questionable designs followed by summary injunctions seeking a European ban is an effective technique for eliminating competition.

In the case of abusive procedures, there is little in the way of compensation for victims if the design is subsequently invalidated. This current state of affairs may limit healthy competition and place a brake on innovation in the European Community market.