Introduction – Exploring Design Infringement: Apple vs. Samsung Case
A significant turning point in the comprehension and implementation of registered Community design rights under Council Regulation (EC) No 6/2002 was reached with the Court of Appeal’s decision in Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339, rendered by Sir Robin Jacob with the concurrence of Kitchin LJ and Longmore LJ. The case concerned whether Apple’s registered Community Design No. 000181607-0001 was violated by Samsung’s Galaxy tablets. The granting of a “publicity order” in favour of a non-infringer, a rare legal remedy in the UK, was another issue it addressed that may eventually involve the Supreme Court.
Historical Context: The Tablet War
Apple and Samsung were embroiled in a multinational intellectual property dispute in 2011 and 2012 that involved patent and design claims in multiple jurisdictions. The iPad itself and any claims of copying were not at issue in the UK case; rather, it was only about Apple’s registered design. This was just a case of design infringement.
HHJ Birss QC, sitting as a Deputy Judge of the Patents Court, held in July 2012 that Samsung’s Galaxy Tab 10.1, 8.9, and 7.7 did not infringe Apple’s design right. He followed up with a second judgment ordering Apple to publicise its loss to correct the commercial uncertainty stemming from the litigation.
Legal Framework: What is Design Infringement?
Under Article 10 of the Community Design Regulation:
“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, including those disclosed in an EU member state.”
The assessment requires understanding:
- The perspective of the informed user;
- The overall impression produced;
- The design freedom available to the designer;
- The design corpus (the prior art landscape).
Notably, copying is irrelevant: infringement is assessed visually.
The Registered Design
Apple’s design was registered in 2004, well before the iPad launch, and consists of seven drawings showing a rectangular tablet with rounded corners and a minimalist aesthetic. Crucially, it is not the same as the iPad’s design.
Who Can Make a Registered Design Infringement Claim?
The right to pursue a registered design infringement claim lies exclusively with the registered owner of the design. This individual or entity holds the exclusive right to take legal action against any unauthorized usage of their design, which encompasses a broad range of activities including making, offering, selling, importing, or using a product that incorporates the protected design. Importantly, even a small difference in expected usage can result in exclusive licensees of a registered design initiating infringement claims, ensuring that those whose businesses rely on these IP rights and intellectual property rights receive expert guidance to seek enforcement if the registered owner fails to act.
In practice, this means that if a third party uses a design without permission, the registered design owner is empowered to enforce their rights through legal channels, with clarity regarding the scope of these rights. The scope of these rights is significant, as it extends to variations that do not create a different overall impression on the informed user. Consequently, the legal framework provides a robust mechanism for protecting the interests of registered design owners, ensuring that their creative contributions are safeguarded against infringement.
The Court’s Analysis: The Informed User and Visual Comparison
Judge Birss adopted the correct test for the “informed user” based on CJEU rulings in Grupo Promer/PepsiCo:
- A non-expert but observant user familiar with the product category.
- Performs direct comparisons when practical.
Apple’s criticisms—that the Judge underplayed technology developments and misapplied the trade mark relevance—were dismissed by the Court of Appeal. The Judge was right to consider the presence of the “Samsung” trade mark and other features as a minor but relevant deviation from the claimed minimalist aesthetic.
Samsung’s design choices (curved sides, ornamented back, camera holes, speaker grilles) distinguished its tablets visually from the Apple design.
Design Corpus and Design Freedom
The Court found that while some design features were dictated by function (flat screens, general rectangular shape), others were open to design choices (rim thickness, side curvature, ornamentation).
Critically, Judge Birss’ step-by-step analysis did not amount to a piecemeal dissection. He correctly synthesised those observations into an overall visual impression, concluding that the Samsung tablets were distinct in aesthetic character.
Sir Robin Jacob, giving the leading judgment, reinforced the point:
“They do not have the same understated and extreme simplicity which is possessed by the Apple design. They are not as cool.”
Testing Infringement
When assessing for infringement of a registered design, the courts employ a visual comparison test. This involves evaluating whether the accused design produces a substantially similar overall impression on the informed user—an assessment that emphasizes the perspective of an ordinary observer familiar with the product and considers the individual character of the designs. Infringement of a registered design is not determined by function, but rather by the aesthetic similarities and differences between the registered design and the accused design. This approach underscores the importance of the visual aspects of design rights, steering the analysis towards how the designs are perceived rather than their practical applications.
In practical terms, the testing for infringement may involve expert testimony to clarify the visual similarities and distinctions. The burden of proof lies with the registered design owner to establish that the accused design is indeed infringing, while the defendant may counter this by highlighting differences that could sway the perception of the informed user. This framework reinforces the notion that even minor visual discrepancies can be pivotal in determining infringement, thus ensuring a fair evaluation of design rights in legal proceedings.
International Context and the Oberlandesgericht Decision
The German Oberlandesgericht’s conflicting interim injunction (against the 7.7) confused the market. Its judgment failed to engage with the detailed reasoning of HHJ Birss and mischaracterised the CJEU’s treatment of Grupo Promer as “outdated.”
Sir Robin Jacob was critical of the German court’s sparse reasoning and its failure to respect judicial comity:
“If courts around Europe simply say they do not agree with each other and give inconsistent decisions, Europe will be the poorer.”
Remedies for Registered Design Infringement
In cases of registered design infringement, several remedies are available to the rights holder. Primarily, the courts, including the high court, can award damages or an account of profits, which serve to compensate the registered owner for losses incurred due to the infringement. Such compensation aims to place the owner back in the position they would have been in had the infringement not occurred. Additionally, the courts can issue injunctions to prevent any further unauthorized use of the design under the nuanced guidelines of design law, providing immediate relief to the rights holder while the case is ongoing.
Injunctions can take various forms, including interim orders to halt infringement activities pending a full trial. Furthermore, a court may order the delivery up or destruction of infringing goods, thereby eliminating the infringing articles from the market. Given the complexities surrounding design infringement cases, obtaining legal advice that goes beyond traditional legal research, including exploring practical law resources and alternative dispute resolution options, provides a better starting point to navigate the available remedies effectively and ensure that rights holders can protect their designs robustly and efficiently.
The Publicity Order: An Unusual but Necessary Remedy
Following Judge Birss’ non-infringement decision, Apple was ordered to publish a statement on its UK website and in national media. Apple appealed this on grounds of proportionality, design impact, and potential humiliation.
The Court of Appeal, however, upheld the order, modifying it to allow a hyperlink on the homepage (not a full statement) and reducing the duration to one month. This was not to punish Apple, but to dispel commercial uncertainty created by the conflicting international litigation and Apple’s own inconsistent conduct.
Samsung had suffered serious commercial harm due to the initial ex parte German injunctions. A clear statement from Apple was needed to restore market confidence.
Sir Robin Jacob clarified the legal basis:
- The court had inherent equitable jurisdiction under s.37 of the Senior Courts Act 1981.
- Such orders are justified where needed to prevent injustice or commercial confusion.
- They are discretionary and not routine.
Conclusion
The high threshold for design infringement under EU law is confirmed by this appeal case formed user test, the analysis of design freedom, and the overall visual impression, including aspects of artificial intelligence, remain central. Apple was unable to prove that the judge had made a legal or moral error.
More importantly, the case established that successful defendants can obtain publicity orders when commercial uncertainty and competitive advantages need to be resolved, which is a first for UK IP law.
Finally, as noted by Sir Robin Jacob:
“If the registered design has a scope as wide as Apple contends, it would foreclose much of the market for tablet computers. Legitimate competition by different designs would be stifled.”
A landmark judgement and a vital reaffirmation of fairness in design right enforcement.
FAQ
What constitutes design infringement in the world of intellectual property?
Design infringement occurs when a party produces, uses, or sells a product that closely resembles another’s protected design without permission. This infringement of design is a violation of intellectual property rights that can lead to legal disputes, particularly when the infringing design confuses consumers or undermines the originality of the original creator’s work.
How can a designer protect their work from being infringed upon?
Designers can protect their work from infringement by legally registering their designs with appropriate copyright or trademark authorities. Additionally, utilizing non-disclosure agreements (NDAs) when sharing designs and actively monitoring the market for potential infringements can help safeguard their intellectual property and maintain exclusive rights to their creations.
