In his judgment of 9 July, His Honour Judge Birss has ruled in Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat) that, while the Apple design (an iPad design) ‘is a cool design‘, the Samsung Galaxy tablets Tab 10.1, Tab 8.9 and Tab 7.7 do not infringe the Apple Community Registered Design No. 000181607-0001. The full judgment can be accessed here.
The effect is that the Galaxy Tablets are free from the most obvious threats of marketing restrictions in the UK. The case may also have an impact in other countries where there is ongoing litigation, especially in jurisdictions where expert evidence has been less robustly challenged and where the test is identical.
Having reminded himself that what really matters is what the court can see with its own eyes, Judge Birss QC said that the ‘most important things are the registered design, the accused object and the prior art and the most important thing about each of these is what they look like’. After making detailed comparisons, he compared his overall impressions and concluded as follows:
- I remind myself that the informed user is particularly observant, shows a relatively high degree of attention and in this case conducts a direct comparison between the products.
- To my eye the most important similarities are as follows:
i) The view from the front is really very striking. The Galaxy tablets are not identical to the Apple design but they are very, very similar in this respect. The Samsung tablets use the very same screen, with a flat glass plate out to a very thin rim and a plain border under the glass.
ii) Also neither Apple nor Samsung have indicator lights or buttons on the front surface or obvious switches or fittings on the other surfaces. There are some subtle buttons on the edges of the Galaxy tablets but they do not contribute to the overall impression. There is an overall simplicity about the Samsung devices albeit not as extreme as the simplicity of the Apple design.
iii) The thinness enhancing effect of the sides creates the same impression. It causes both the Apple design and the Galaxy tablets to appear to float above the surface on which they rest. However the details of the side edges are not the same. The Apple design has a pronounced flat side face which the informed user would see clearly (and feel). It is absent from the Samsung tablets.
- There are some minor differences but to my eye there are two major differences. The most important difference between the Samsung Galaxy tablets and the Apple design is the thinness of the Galaxy tablets. The next most significant difference is the detailing on the back of each of the tablets.
- It is hard to appreciate relative thickness from drawings and photographs. A product made to the Apple design and of similar length would be about twice as thick as any of the Galaxy Tabs. The product to the Apple design will look thinner as a result of the side curves but the same visual effect on the edges of the Galaxy Tabs makes them look even thinner. Resting on a table side by side the surface of a product made to the Apple design will be noticeably above these tablets. To an informed user, the Galaxy tabs do not merely look like a thin version of the Apple design, they look like a different, thinner design of product.
- The back of the Apple design is the place in which there are fewer constraints on design freedom (apart from being generally flat) and more variety in the design corpus. The curving of the rear surfaces of the Galaxy Tabs is a bit different from the Apple design but not significantly so. What strikes the informed user is the detailing on the back faces of the Samsung products. I will consider the Tab 7.7 since to my eye that has the least visually prominent detailing. If the Tab 7.7 does not infringe, then neither does the Tab 10.1 nor Tab 8.9. The informed user will see that in this product Samsung has exercised the available design freedom by having visible detailing on the rear of the articles. To have this sort of detail on the back would strike the informed user as unusual.
- Are these two differences enough to overcome the similarity at the front and the similarity in overall shape? Apple submitted that the front face and overall shape are what matters because the informed user will principally spend his time looking at the front face and holding the object in his hand. I do not regard the overall shape as very significant but there is a very obvious visual similarity at the front. In my judgment the key to this case is the strength or significance of that similarity. As I have said the significance of the near identity of the front surfaces of these products is reduced to a degree by the existence of similar fronts in the design corpus. The question is – to what degree?
- This case illustrates the importance of properly taking into account the informed user’s knowledge and experience of the design corpus. When I first saw the Samsung products in this case I was struck by how similar they look to the Apple design when they are resting on a table. They look similar because they both have the same front screen. It stands out. However to the informed user (which at that stage I was not) these screens do not stand out to anything like the same extent. The front view of the Apple design takes its place amongst its kindred prior art. There is a clear family resemblance between the front of the Apple design and other members of that family (Flatron, Bloomberg 1 and 2, Ozolins, Showbox, Wacom). They are not identical to each other but they form a family. There are differences all over these products but the biggest differences between these various family members are at the back and sides. The user who is particularly observant and is informed about the design corpus reacts to the Apple design by recognising the front view as one of a familiar type. From the front both the Apple design and the Samsung tablets look like members of the same, pre-existing family. As a result, the significance of that similarity overall is much reduced and the informed user’s attention to the differences at the back and sides will be enhanced considerably.
- The informed user’s overall impression of each of the Samsung Galaxy Tablets is the following. From the front they belong to the family which includes the Apple design; but the Samsung products are very thin, almost insubstantial members of that family with unusual details on the back. They do not have the same understated and extreme simplicity which is possessed by the Apple design. They are not as cool. The overall impression produced is different.
Conclusion
- The Samsung tablets do not infringe Apple’s registered design No. 000181607-0001.
