High Court rules on threats and jurisdiction in declaration for non-infringement

United Kingdom

In Samsung Electronics (UK) Ltd v Apple Inc ([2012] EWHC 889 (Ch), April 4 2012), the High Court of England and Wales has considered several preliminary issues in a case involving Apple Inc’s registered Community design for a tablet computer.

In an ongoing dispute between Samsung Electronics (UK) Ltd and Apple, in which Apple has asserted one of its registered Community designs against the Samsung Galaxy tablet computer in infringement proceedings in Netherlands and Germany, Samsung has brought proceedings before the Office of Harmonisation for the Internal Market (OHIM) claiming that Apple’s design is invalid. In this case, Samsung Electronics UK Ltd and its Korean parent Samsung Electronics Co Ltd (SEC) applied for declarations that the Galaxy tablet did not infringe Apple’s registered design and also applied for an injunction restraining Apple from making threats to sue for infringement.

Mann J ruled that the High Court had no jurisdiction to hear the claim for a declaration of non-infringement in the United Kingdom, as neither SEC nor Apple was domiciled or had an establishment in the United Kingdom, as required by Article 82(1) of the Community Designs Regulation (6/2002). Samsung argued that, based on the point raised in the German proceedings that Samsung Germany was an establishment of SEC, Apple was estopped from claiming that Samsung UK was not an establishment of SEC within the jurisdiction of the High Court. This argument was rejected by the High Court on the basis that the principle of estoppel applied only if the other party wished to assert or deny establishment, which was not the case before the court.

Apple argued that the claim should be stayed pending the outcome of Samsung’s invalidity proceedings before OHIM, as the claim involved issues of “scope of protection” that were common to a claim for a declaration of non-infringement and validity.

Mann J found that OHIM did not have exclusive jurisdiction on validity. He also noted that validity could be raised in national courts if infringement proceedings were started, but if a claimant wished to raise a validity point without being sued first, that action had to be taken in OHIM. The exception under Article 91 of the regulation did not apply, as actions for declarations for non-infringement could continue even if validity was already at issue in OHIM.

Mann J noted the threats action was based on English law provisions contained in the Community Design Regulations 2005 (SI 2005/2339). He ruled that Samsung had failed to establish that it had a good arguable case on the threats action. Samsung relied on several factors in support of its claim that threats had been made:

  • Apple’s assertions in separate proceedings in Germany;
  • its failure to respond to an invitation to consent to a declaration of non-infringement; and
  • various statements by Apple officials alleging that Samsung was involved in copying Apple’s products.

However, Mann J ruled that, on the facts, none of Apple’s actions amounted to a threat of proceedings and there was no good, arguable case.

The case considered only preliminary issues and did not involve any consideration of substantive Community design law. The existing law on groundless threats remains unchanged and it is difficult to see how Samsung could have succeeded on the alleged threats.

Rohan Massey and Tamara Vasiljeva, McDermott Will & Emery UK LLP, London

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