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Apple ordered to publicise Samsung's success in defeating claims of design rights infringement

The UK's Court of Appeal has made a "commercially pragmatic" ruling in ordering Apple to post a link from its website homepage to information detailing that Samsung has not infringed its Community design rights, an expert has said.19 Oct 2012

On Thursday the Court of Appeal rejected an appeal by Apple against a previous ruling made by the High Court in which it was found that the design of Samsung's Galaxy Tablet device versions 10.1, 8.9 and 7.7 did not infringe registered design rights belonging to Apple.

The Court of Appeal said that conflicting Court decisions in the UK and Germany had created confusion about whether Samsung's devices were infringing and that the public should not have to rely on media reports of its ruling to inform consumers of the true position. It has therefore ordered Apple to take out adverts with some UK national newspapers to publicise the results of the ruling. In addition, the Court of Appeal has ordered "Apple itself" to "make the position clear" by acknowledging through a notice on its website that "the court has decided that these Samsung products do not infringe its registered design".

The High Court had originally ruled that such a notice should be posted on Apple's website homepage. However, the Court of Appeal has now said that a link from the homepage to the notice would be sufficient instead.

"There have been examples of cases where judges have been keen to make companies publish notices where they have been found to infringe intellectual property rights," patent and design rights specialist Deborah Bould of Pinsent Masons, the law firm behind, said. "In principle judges ought, like they have done in this case, to be able to make an order the other way around; namely where there has been a finding of non-infringement."

"The decision to force Apple to place a link to the notice, rather than publish the notice on its homepage, is commercially pragmatic. Apple's homepage is renowned for its clean, uncluttered look. A link to the notice achieves the purposes sought by the Court of Appeal in this case," Bould added.

Apple had asked the Court of Appeal to rule that Mr Justice Birss QC had made errors of law in how he had determined that an 'informed user' would have concluded that Samsung's devices produced a different "overall impression" compared to Apple's 2004 registered design.

A registered Community design is a monopoly right for the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and materials of the product or its ornamentation. Applications are filed at the Office for Harmonisation in the Internal Market (OHIM). Approved Community designs cover all 25 member states of the European Union.

In order to qualify for Community design rights, designs must be new and have individual character.

Under the EU's Regulation on Community design rights a design is said to be new if it differs from known designs by more than "immaterial details". To have individual character the designs must give an "informed user" a different "overall impression" from their "overall impression" from other known designs. "In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration," according to the Regulation.

Designers can obtain up to 25 years worth of protection for registered Community designs, although the protection has to be renewed every five years.

In the appeal, Apple argued that the differences in thickness between Samsung's devices, the positioning of trade marks on Samsung's devices, and the existence of a "frame" on Samsung's device were not sufficient to create a different overall impression to the Apple design.

However, Sir Robin Jacob, who delivered the leading judgment for the Court of Appeal, said that he could not "begin to see any material error" made in the High Court judgment of Mr Justice Birss QC.

"Even if I were forming my own view of the matter, I would have come to the same conclusion and for the same reasons," Sir Robin said in the ruling. "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."

Sir Robin's views were supported by Lord Justice Kitchin and Lord Justice Longmore. Sir Robin had been at pains to stress that Apple's registered design was "not the same as the design of the iPad" and said it was "completely irrelevant" whether the iPad could be said to fall "within the scope of protection of the registered design".

Design rights expert Indradeep Bhattacharya of Pinsent Masons said that it was "unusual" for a High Court judge to be given such a "glowing endorsement" by Sir Robin Jacob.

"Design rights cases are traditionally quite straightforward but Judge Birss went into quite remarkable detail and analysis in his first instance ruling," Bhattacharya said. "Justice Birss has been criticised in some quarters for  getting too caught up on the detail of the various features of Apple's registered design rather than looking at the overall impression that an informed user would form. However, I think that criticism is unfair because it is apparent that judge's ruling ultimately turned on his conclusions on overall impression."

Bhattacharya said that whilst there appears to be limited grounds on which Apple can mount a further appeal to the Supreme Court, it may get "creative" to take the matter to the nation's highest court. Apple may argue that Mr Justice Birss QC applied the wrong legal test in his ruling on infringement, the expert said. However, Apple is unlikely to be successful if it does, Bhattacharya said.

"Although the High Court in the UK was first seized of the task of ruling on the issue of whether Samsung had infringed on Apple's design, courts in Germany have also been ruling on the issue," Bhattacharya said. "Because the case dealt with Community design rights, the Court of Appeal said that the German courts should have declined to make a further ruling on infringement after the UK High Court had made its finding on the substantive merits in July. However, for a time Apple continued to pursue infringement action in Germany, although it has now withdrawn this action."

"One of the courts in Germany found Samsung to have infringed on Apple's design rights. It had based that decision partly on the view that a ruling by the EU's General Court, which set out the tests on how to determine what constitutes an 'informed user', had been 'superseded' by a subsequent decision," the expert said.

"Apple may ask the Supreme Court to hear an appeal against the Court of Appeal's judgment on the basis that the wrong legal tests were applied. If the Supreme Court accepts that that is a legitimate ground of appeal then it may have to ask the Court of Justice of the European Union to rule on which one of the two cases takes legal precedent. This would be a creative avenue of appeal for Apple and one that I do not think it would be successful in pursuing," Bhattacharya said.