Apple loses Samsung Galaxy appeal - and is ordered to publish judgment

In July 2012, in the case of Samsung Electronics (UK) Limited v Apple Inc ([2012] EWHC 1882 (Pat), July 9 2012), his Honour Judge Colin Birss QC had decided that three tablet computers marketed by Samsung - the Galaxy Tab 10.1, Tab 8.9 and Tab 7.7 - did not infringe Apple’s registered Community design (RCD) No 000181607-0001. Moreover, he ordered that the decision of non-infringement be published by Apple, in a supplementary decision ([2012] EWHC 2049 (Pat), July 18 2012).

On October 18 2012, after an expedited appeal, both the finding of non-infringement and the order for the publication of the judgment were confirmed by the Court of Appeal in Samsung Electronics (UK) Ltd v Apple Inc ([2012] EWCA Civ 1339), Sir Robin Jacob giving the leading judgement and Kitchin LJ and Longmore LJ concurring. 

On the substantive matter, Sir Robin noted that the “main question” was whether Judge Birss was wrong in his assessment of a different overall impression to the informed user, and that such an assessment would not be disturbed on appeal unless the judge had gone wrong in principle. 

After analysing the assessment made by Judge Birss, Sir Robin concluded:

“Overall I cannot begin to see any material error by the Judge.”

and

“I would add that, even if I were forming my own view of the matter, I would have come to the same conclusion and for the same reasons. If the registered design has a scope as wide as Apple contends, it would foreclose much of the market for tablet computers. Alterations in thickness, curvature of the sides, embellishment and so on would not escape its grasp. Legitimate competition by different designs would be stifled.”

Accordingly, the finding of non-infringement was affirmed.

There was then the question of the publicity order. This order had been suspended by the Court of Appeal, pending the full appeal. Further, the matter was considered de novo, because the Court of Appeal had before it new material that was not present at first instance.

Publicity orders requiring a party to publish the decision of the court were, according to Sir Robin, unknown in IP cases in the jurisdiction of England and Wales prior to the IP Rights Enforcement Directive (2004/48/EC). This directive expressly provides for publicity orders only where the IP right holder has been successful – it does not provide for publicity orders the other way round, namely where a party has successfully defended an unjustified claim of infringement or has obtained a declaration of non-infringement. Nevertheless, Sir Robin had “no doubt that the court has jurisdiction to grant a publicity order in favour of a non-infringer who has been granted a declaration of non-infringement”.

Sir Robin accepted that the power to grant such a publicity order should be exercised only where it was proportionate, and stated:

“The grant of such an order is not to punish the party concerned for its behaviour. Nor is it to make it grovel - simply to lose face. The test is whether there is a need to dispel commercial uncertainty.”

After considering the history of the case, Sir Robin concluded that the massive publicity given to Judge Birss’ “not as cool” judgment would have rendered the publicity order unnecessary, were it not for some intervening events in Germany.

Apple had appealed to the German Court of Appeal, the Oberlandesgericht, a decision of October 24 2011 by the Landgericht Düsseldorf not to grant an interim injunction in relation to the Galaxy Tab 7.7. Notwithstanding Judge Birss’ decision of July 9 2012, which was a final decision of a UK court acting as a Community design court (ie, a decision on a main action, not a preliminary action as the German action had been), the Oberlandesgericht allowed the appeal and, on July 24, granted a pan-European interim injunction in respect of the Galaxy Tab 7.7 against Samsung. This injunction also attracted a great deal of publicity.

Sir Robin took the view that the German courts should not have been used to grant provisional measures once a Community court had reached a final decision. He also criticised the Oberlandesgericht for disagreeing with Judge Birss’ decision while giving only meagre reasons for doing so, and stated: “If courts around Europe simply say they do not agree with each other and give inconsistent decisions, Europe will be the poorer.”

Apple undertook forthwith to apply to the German court for the interim injunction to be discharged. Even so, Sir Robin took the view that the German events made a publicity order appropriate, stating:

“Apple itself must (having created the confusion) make the position clear: that it acknowledges that the court has decided that these Samsung products do not infringe its registered design. The acknowledgement must come from the horse's mouth. Nothing short of that will be sure to do the job completely.”

Accordingly, it was ordered that Apple should publish a notice, in an agreed wording, in a number of national papers and trade magazine, and through a link on the Apple home web page.

Darren Smyth, EIP, London