The Court of Appeal has issued its ruling in Montres Breguet SA v Samsung Electronics Co Ltd [2023] EWCA Civ 1478.
The High Court had considered a claim for trade mark infringement brought by the claimant watch makers against the Samsung Electronics group. The claim related to digital watch faces (watch face apps) that could be downloaded to Samsung’s smartwatches from the Samsung Galaxy App store (SGA store).
The claimants were all members of the Swatch group of watch makers. Swatch claimed that between October 2015 and February 2019 a total of 23 of their trade marks were infringed by 30 watch face apps being made available, and that Samsung had admitted that they had been downloaded around 160,000 times in the UK and EU. Although each of the apps was developed by a third party, Swatch maintained that Samsung was intimately involved in, and controlled, the whole process by which the apps were made available. Their primary case was that Samsung was liable as a primary tortfeasor, alternatively that it was a joint tortfeasor.
Samsung denied liability. Its defences included that it had not used the marks, that the signs on the apps were not used in a way that indicated that there was any connection with Swatch, and that the conditions for joint liability were not established. Further, it relied on the exemption from liability in Article 14 of the e-Commerce Directive 2000/31/EC.
High Court decision
Swatch had established infringement of its marks, under Article 9(2)(a) or (b) of the EU Trade Mark Regulation, in respect of various of its apps. In respect of some of them, the finding of infringement related to the relevant sign on the watch face only, as opposed to any app name. In respect of others, it related only to the sign in an app name. For the rest of the apps the court’s conclusion related to both.
The court concluded that use in app names (or in previews of the watch face) is not use in relation to smartwatches. Therefore, findings of double identity infringement under Article 9(2)(a) were limited to the use of signs on watch faces produced by watch face apps, which did constitute use in relation to smartwatches (or in relation to the “computers worn on the wrist”, “electronic apparatus incorporating a time display” or “smartphones in the shape of a watch” for which Swatch has registered marks and on which it relied in its pleaded case).
The judge also concluded that watch face apps are similar goods to smartwatches and that they have some level of similarity with watches, such that infringement was established under Article 9(2)(b) where the other requirements are met, including likelihood of confusion.
Swatch had also established infringement under Article 9(2)(c) for certain apps in respect of the relevant sign as it appeared on the face of the watch.
Samsung could not rely on the hosting defence in Article 14 of the e-Commerce Directive.
Court of Appeal decision
The Court of Appeal dismissed the appeal, holding that the judge had been entitled to conclude that there had been use of the offending signs by Samsung in relation to smartwatches and that the hosting defence was not available to it. This was because:
- Samsung’s actions went well beyond merely creating the technical conditions for use of the signs, allowing use of the signs and receiving payment. The factors the judge relied on were not inherent in the operation of an app store and they did bear upon the context in which the signs were used. In addition, the judge was not merely entitled, but correct, to take into account matters which, even if they were in themselves unknown to consumers, nevertheless affected consumers’ perception of the signs.
- The judge had been correct to find that there had been use in relation to smartwatches.
- Samsung’s acts of use of the signs had been active and had given it knowledge of and control over that content. Accordingly, they were not within Article 14(1). Therefore, it was unnecessary to consider whether they fell within Article 14(1)(a).
