The England and Wales Court of Appeal, in a decision written by Justice Robin Jacob, has upheld the lower court’s ruling that Samsung did not infringe Apple’s registered design with its Galaxy tablet and the requirement that Apple publish the fact of the non-infringement.
In today’s decision, Samsung Electronics (UK) Ltd v Apple Inc  EWCA Civ 1339, emphasized that the case was only about the infringement of an Apple Community Design registration by Samsung, not about whether Samsung copied Apple or whether the Samsung Galaxy table is confusing with the Apple iPad.
Justice Jacob, writing for the court upheld the trial judge’s analysis of Samsung’s use of trade-marks on the tablet:
18. I think the Judge was correct here. If an important feature of a design is no ornamentation, as Apple contended and was undisputed, the Judge was right to say that a departure from no ornamentation would be taken into account by the informed user. Where you put a trade mark can influence the aesthetics of a design, particularly one whose virtue in part rests on simplicity and lack of ornamentation. The Judge was right to say that an informed user would give it appropriate weight – which in the overall assessment was slight. If the only difference between the registered design and the Samsung products was the presence of the trade mark, then things would have been different.
The court considered the scope of the registration by looking to the design constraints and prior registrations:
39. All of this appears to be a proper assessment of the degree of design freedom. In overall terms for a hand-held tablet (1) you need a flat transparent screen, (2) rounded corners are unremarkable (and have some obvious functional value in a hand-held device), and (3) you need a border of some sort for functional reasons. There is some design freedom as regards ornamentation, the rim, the overall shape (rectangular or with some curved sides) but not a lot. And the main thing, the screen itself was something with which the informed user would be familiar as indeed Mr Silverleaf acknowledged when arguing the “dotted line” point.
54. 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.
Justice Jacob also discussed the interplay between the UK courts and the German courts, particularly the German Court of Appeal which had granted an interim EU-wide injunction against Samsung after the trial decision had found non-infringement: “Firstly I cannot understand on what basis the Court thought it had jurisdiction to grant interim relief.” [para 56]
The court considered and upheld the publicity order under an EU Enforcement Directive, requiring Apple to publicize its loss:
75. I have 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. A declaration is a discretionary, equitable, remedy. The injunction is an adjunct to the declaration. It will not always be appropriate to grant it. Whether or not it is depends on all the circumstances of the case – as I said earlier where there is a real need to dispel commercial uncertainty. It is that test I propose to apply here.
84. Of course our decision fully understood actually lifts the fog that the cloud of litigation concerning the alleged infringement of the Apple registered design by the Samsung Galaxy 10.1, 8.9 and 7.7 tablets must have created. And doubtless the decision will be widely publicised. But media reports now, given the uncertainty created by the conflicting reports of the past, are not enough. Another lot of media reports, reporting more or less accurately that Samsung have not only finally won but been vindicated on appeal may not be enough to disperse all the fog. It is now necessary to make assurance doubly so. 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.
The Court does an extensive analysis for determining the infringement of design registrations, known in Canada as industrial designs. Since there are few cases in Canada on the merits for industrial design infringement, this case may serve to be guidance to any Canadian court’s considering design infringement in the future.