Archive for the 'Design Rights' Category

Court of Appeal confirms Apple must publish non-infringement decision

We have blogged a couple of times in the last few months on the Samsung v Apple case in England in which Samsung obtained a Court order that its Galaxy tablets 10.1, 8.9 and 7.7  did not infringe Apple’s registered design for the i-Pad.  Most recently, I wrote about the order which Samsung obtained from the High Court which forced Apple to publicise the decision of non-infringement on its website and in the press.  As I mentioned at the end of that blog, Apple appealed this decision and as a result the order to publish was suspended pending the Court of Appeal’s ruling.

The Court of Appeal has now issued its decision in this case (a copy of the decision can be found here).  Essentially it upheld the High Court’s ruling of non-infringement and importantly it also upheld the order, albeit in refined terms, on which Apple had to publicise the decision.  The Court of Appeal considered the publication issue afresh because there was a considerable amount of new material which had come to light since the original decision had been issued and whilst it reached the same conclusion it did so on different grounds. 

Subsequent to the initial High Court decision of non-infringement, which applied throughout Europe, Apple applied to a German court and obtained an order which prevented Samsung selling its Galaxy Tab 7.7, also effective throughout Europe.  The Court of Appeal said that this caused confusion in the market place and customers were left uncertain whether or not they were purchasing an infringing product, and if they did, whether it would be supported.  Interestingly, the Court of Appeal said that given the massive publicity of the High Court’s original finding (in which the headline that Samsung’s products were ‘not as cool’ as the Apple ones was seized upon by the media) it would not have granted the order for publication had it not been for the confusion caused by the German court’s decision.  This was what made it necessary.  The Court did however vary the terms of the High Court’s order and said that it would be sufficient for Apple to publish on its UK website a link entitled “Samsung/Apple UK judgment”, which led to a short notice summarising the High Court’s decision, for a period of one month.  It also required Apple to advertise the decision in the press, including the Guardian and the Financial Times, in a font size of not less than Arial 14 and on a page before page 6 of those publications.

No such publication has yet been made by Apple and so the question now remains whether it will further appeal and seek suspension of the Court of Appeal’s decision to the Supreme Court.  We will continue to monitor this case for further developments with eager anticipation!


Mark Cruickshank

Brodies Intellectual Property Survey Results- download now!

Recently we carried out a snapshot 60 second survey on Intellectual Property (IP) in conjunction with ADS, ScotlandIS and SCDI. We were keen to learn more about how businesses are dealing with such valuable key assets and what IP issues are of most importance to them. Responses were received from both large and small companies from a broad range of sectors.

The survey asked a number of key IP related questions such as whether audits were carried out to keep a track on the extent and value of IP, how it was used on social media platforms and whether businesses were involved in IP disputes. The results provide an interesting snapshot and insight into how businesses are dealing with IP as well as highlighting some areas where altering how IP is managed could improve the competitive advantage it gives to a business as well as maximising commercial returns.

We would like to share the results with you. They are available to download here 

Robert Buchan

Design rights reform – two weeks until IPO consultation closes

The IPO‘s consultation on the proposed reform of the legal framework for the protection of designs is due to close a fortnight today (2 October).

The consultation is a further step towards implementing one of the key recommendations of last year’s Hargreaves Review and follows an earlier call for evidence on design rights reform.

The proposals
Currently, designs can be protected by a mish-mash of unregistered design rights (both UK and (European) Community), registered design rights (again, both UK and Community) and, in some cases, copyright. Each lasts for differing periods of time, and covers different applications (for example, 3D objects versus aesthetic designs), and is subject to different, and complicated, rules in relation to creation of the right.

In an attempt to get round the time limited nature of registered design protection, there have even been attempts to use registered trade marks to protect product designs.

The consultation is seeking to make this clearer. In particular, the consultation is seeking views on proposals to:

  • improve the enforcement regime (including whether deliberate copying should be a criminal offence, as it is with copyright and registered trade marks) and enable people to understand more fully what rights are held by others, to help avoid disputes;
  • resolve uncertainties around the scope of protection (including the scope of protection given to unregistered designs, or whether to scrap unregistered designs altogether);
  • clarify what constitutes an infringement (including the possibility of introducing a prior use/good faith defence in relation to registered designs, and exemptions for non-commercial use); and
  • extend the period of potential deferment for publication of registered design right applications from 12 to 18 months, to reduce the risk of the product being copied or imitated prior to launch; and
  • simplify the laws surrounding the ownership of and qualification for design right

Design rights in the public eye
After many years of being considered by many outside industry and legal professions to be a fairly obscure area of intellectual property rights (as opposed to the better known patents, trade marks and copyright), design rights arguably hit the big time earlier this year in the High Court case involving Apple’s iPad and Samsung’s Galaxy Tab.

That case wasn’t about copying technical innovation, but simply about the allegedly distinctive physical shape of the iPad. As my colleagues John and Mark have blogged, that case didn’t end too well for Apple (arguably even the ringing endorsement of Apple’s products by a High Court judge will have done more for Samsung than Apple).

However, the case (along with others involving spare parts for Dyson vaccuum cleaners and replica alloy wheels) has helped bring greater attention to the design rights framework and whether it is effective in its current form in encouraging innovation.

How to respond to the consultation
What do you think? Does the current regime work for your business? You can provide your views to the IPO by following this link. If you’d like to discuss how the IPO’s proposals might impact upon your busienss, please get in touch.

Remember, the consultation closes on Tuesday 2 October 2012.

If you want to find out more about how to protect your designs, or other types of intellectual property rights, then download our free guide to protecting your intellectual property.

Last opportunity to take part in our survey on how organisations identify, value and exploit their intellectual assets

Our survey on how organisations value and protect their intellectual assets closes at the end of this week.

Launched in conjunction with industry bodies ADS, SCDI and ScotlandIS, our survey is looking to identify how key intellectual property (IP) assets are dealt with and the IP issues which matter most to businesses today. We want to hear your views and appreciate your participation.

Year on year investment in the UK in intangible assets such as IP is higher than investment in traditional physical assets such as machinery or premises. IP rights, whether to a brand, design or manufacturing process, are often the most valuable asset that a business owns.

For any business to maintain a competitive advantage in the marketplace and maximise the return on investment, IP rights require to be properly managed or they will simply go to waste. Are you confident that you are making the most of your IP?

Please click here to take part (anonymously) in our 60-second survey and let us know what matters most to you in intellectual property. The survey will close at 5pm on Friday 24 August.

We look forward to sharing the results with you.

We’re keen to canvass views from as many organisations as possible. If you’d like to share the survey with your contacts then please feel free to use this shortened URL:

Free guide to protecting your intellectual property

Link to Brodies guide to protecting IP

Are you interested in finding out more about the  intellectual property that you or your organisation creates or usses in your business? Would you like to learn about the steps you can take to protect your intellectual efforts and prevent others from copying your work?

Often intellectual property rights (IP), whether in a brand name, design or manufacturing process, form a key part of the value of a business and its ability to stand out from the crowd and effectively compete.

To be able to optimise the value of IP and be best placed to generate a maximum return from it, it is important that a business takes active ongoing steps to identify, protect, exploit and enforce such rights. Over many years our IP specialists have worked with local and international businesses of all shapes and sizes to ensure that their IP is being fully protected.

Based on that direct experience we have compiled a brief overview guide to protecting your IP which we would like to share with you.

The guide is free to download. You can access the guide by following this link.

You can also share the guide using the shortened link

We hope you find it useful.

To find out more about our expertise and the services that we offer here at Brodies you have any questions then please contact me or another member of Brodies’ IP and technology team.

Finally, remember that you can also take part in our anonymous survey on how organisations use and value their intellectual assets. We’re keen to hear what you think. To take part, follow this link.

Taking a bite out of Apple

Following my colleague John McGonagle’s blog on the recent Samsung v Apple case in the High Court in London, there has been an interesting further development in this battle of the tech giants.

An order for Apple to publicise the decision of the High Court

As John noted in his blog, Samsung was successful in its application for a declaration by the Court that its Galaxy tablet did not infringe the registered design of Apple’s iPad. Now Samsung has returned to Court to successfully obtain an order that forces Apple to publicise the High Court’s decision on the Apple UK website for 6 months and in certain leading UK based press and magazines such as the Guardian, the Financial Times and T3.  This could obviously be damaging to Apple.  Not only will it have to publicise that the Samsung product does not infringe its iPad, but it is also effectively giving free advertising to a competing product. 

To the lay observer, this may be a surprisingly draconian order for the Court to make.  However, this is not the first time that such an order has been granted in an intellectual property case.  The basis for such an application is found in Article 15 of the IP Enforcement Directive 2004/48.  It states that:

Member States shall ensure that, in legal proceedings instituted for infringement of an intellectual property right, the judicial authorities may order, at the request of the applicant and at the expense of the infringer, appropriate measures for the dissemination of the information concerning the decision, including displaying the decision and publishing it in full or in part. Member States may provide for other additional publicity measures which are appropriate to the particular circumstances, including prominent advertising.

The article was given force in England by Practice Direction 26.2 to Part 63 of the English Civil Procedure Rules.  The equivalent enforcing legislation in Scotland is (Section 5 of the IP (Enforcement, etc) Regulations 2006).  

The rationale behind this Article is best explained by recital 27 of the Enforcement Directive which states that its purpose is:

To act as a supplementary deterrent to future infringers and to contribute to the awareness of the public at large, it is useful to publicise decisions in intellectual property infringement cases.

The eagle eyed amongst you will have noticed that the Article and the Recital state that the order may only be granted for “infringement proceedings” and it does not specifically say it may also be used in an application for a ‘declaration of non infringement’.  Perhaps it was not countenanced by the drafters of the Directive that the provision would be used by a pursuer in such circumstances?  Nevertheless, the English Court  interpreted the Directive in a wide manner and whilst recognising the distinction, it took a practical approach that the order could be made in favour of the successful party in infringement and declaration of non infringement proceedings.  The real question it had to answer was not whether the Court had jurisdiction to make such an order, but whether its power to do so should be exercised.

The Court’s justification for granting the order to publicise

In granting the order that Apple must publicise the English Court’s ruling of non-infringement in the UK, a key consideration was certain statements made by Apple in response to the Court’s decision.  Apple asserted that notwithstanding the  finding of non infringement, Samsung was guilty of ‘blatantly copying’ and that its Galaxy Tablets look a ‘lot like the iPhone and iPad’.   The Court accepted that Apple is entitled to express its opinion that the earlier decision was incorrect and that they could not be prevented from doing so under the freedom of speech provisions in Article 10 of the European Convention on Human Rights.   However, the Court also recognised that such statements could cause ‘commercial harm’ to Samsung  because of the innuendo that Samsung still infringed Apple’s designs, and in this case it decided that it was appropriate to make an order to publicise the judgment.     

One limitation is that in granting the order, the Court noted the differing decisions (some in favour of Apple, some in favour of Samsung) there have been in the various battles between the companies across Europe and in the US and it therefore limited the order to for Apple to publicise the judgment in the UK only.

The lesson?

The lesson in this case is that it could be dangerous to protest too much.  If Apple had accepted the Court’s decision without criticism, the Court may have found it more difficult to justify the order for publication which Samsung sought.   However, Apple may still feel ‘vindicated’ that it can continue to protest its innocence and criticise the Court’s ruling.  Perhaps a carefully constructed advertising campaign could minimise any damaging effect on the sales of Apple products caused by the necessity to publicise the decision.

Apple has already been granted permission to appeal the finding of non infringement and at the time of writing this blog there is no sign (either on its website or in the press) that it has complied with the Court order to publicise the decision.

Mark Cruickshank

Is ACTA dead in the water?

The European Parliament has delivered a resounding veto to the Anti Counterfeiting Trade Agreement (ACTA).

In my previous blog on ACTA, I wrote about the widespread opposition to ACTA on the grounds that it contains:

…vaguely worded provisions which could potentially allow internet service providers to monitor and disconnect repeat infringers and that it makes available unfair statutory damages for online music infringement to rights holders.

It could also have:

…given customs officers much greater powers to search and seize goods which are suspected of infringing intellectual property to prevent them from crossing national borders.

It will come as no surprise therefore that the European Parliament voted against ratifying ACTA on 4th July. The margin by which it was rejected, 478 votes to 39 (with 165 abstentions), is indicative of the unpopularity of this agreement.

What does the rejection mean?
It now means that none of the EU Member States can join ACTA.  In truth, the veto will have little impact for the internal laws of many member states (particularly in Scotland and the rest of the UK) because most of the proposals set out in ACTA are already present in domestic and European law. 

However, the rejection has more significance in terms of international enforcement and co-operation.  ACTA aimed to allow greater cross border protection against intellectual property infringement and it would have allowed rights holders and customs officers enhanced powers in countries where those powers did not already exist.

Where now for ACTA?
The rejection of ACTA will be celebrated by its opponents, such as supporters of open rights groups but is this really the end for ACTA? Perhaps not.

Prior to the European Parliament’s vote, the Court of Justice of the European Union had been asked to rule on ACTA’s compatibility with European law.  That decision will still be issued (irrespective of the European Parliament’s veto) and the EU Trade Commissioner will then discuss with the other international sponsors of the Agreement how ACTA wil be taken forward, if at all.

ACTA could also still come into force in its current form in other sponsor countries if six members of the agreement ratify it. However, without the approval of the EU (and potentially the US) its impact will be much less forceful.

Nevertheless, this is likely be the end of the road for ACTA in its present form (certainly in the EU) as it would require wholesale modification before being re-submitted to the European Parliament. 

Given the opposition to ACTA so far, perhaps it would be better simply to acknowledge the widespread unpopularity of the Agreement and consider alternative means of trans-national intellectual property enforcement.

Mark Cruickshank

Samsung “not as cool” as Apple, says High Court judge

I wrote last month about the smart phone “patents war” currently underway between what I described as a “tangled web of enmity and informal alliances amongst software developers, mobile handset manufacturers and telecoms operators”. 

Although I felt that summarising the battleground as “Apple vs manufacturers which use Google’s Android operating system (particularly Samsung)” was overly simplistic, there is no denying that Apple vs Samsung is one of the key contests, and the companies aren’t just arguing about smart phones and patents. 

There is also a complicated ongoing dispute regarding the alleged infringement of Apple’s registered Community Design No 181,607-0001 (for its  iPad) by Samsung’s Galaxy tablet.  (In case you haven’t seen the devices side by side, a good picture can be seen here.)

In a UK High Court judgement yesterday Samsung won the latest round of the iPad/Galaxy dispute, but at a potential cost, as Judge Birss QC described the iPad as being as being more “cool” than the Galaxy.   (Samsung can either despair that even an upper-class, middle-aged man thinks that Galaxies are less cool than iPads, or alternatively hope that iPads suffer the “Clarkson Effect”!)

A large body of international litigation

There have been preliminary (non binding) iPad/Galaxy proceedings in both the German and Dutch courts.

In Germany the first instance court in Düsseldorf held that the Galaxy tablets infringed the iPad Registered Design, but on appeal decided there was no infringement (although the German court did grant an injunction on the Samsung tablets on a different basis under German unfair competition law).  In the Netherlands Apple lost at first instance and on appeal.

Samsung then applied to the Office for Harmonisation in the Internal Market (“OHIM”) for a declaration of invalidity as regards Apple’s Registered Design, and brought proceedings in the UK for a declaration that the Galaxy does not infringe Apple’s Registered Design (“if (which it is not admitted) the Registered Design is valid”).

Apple served a defence and counterclaim that the Galaxy infringed their Registered Design, developing the UK proceedings into the first substantive hearing in the European Community of the issue of infringement.

In the UK High Court Judge Birss acknowledged the German and Dutch proceedings, stating that “Community wide rights and harmony between courts of different member states on issues like this is very desirable”, but declined to place reliance on them.

Judge Birss also had to satisfy himself that the UK proceedings did not stray into the subject matter of the OHIM proceedings (the ultimate validity of Apple’s Registered Design), and decide whether to allow both Samsung’s claim and Apple’s counterclaim, stating at paragraph 23:

Is a declaration enough to satisfy the commercial urgency of the claim or should the infringement claim proceed too? Apple submitted that if the court decides that the Galaxy tablets…infringe then it would be unfair for Apple to have to wait for relief pending the outcome at OHIM. I agree. Thus while there is no risk of injustice if I allow the infringement claim to proceed, there is a genuine risk of injustice if I stay the counterclaim and allow the declaration issue to be heard without it.

The judgement and the “correct approach overall” in determining Registered Design infringement

Judge Birss explained that due to the commercial significance of the debate, the 46 page judgment was much longer than should normally be necessary in a case about infringement of a Community Design Right. 

Apple alleged that seven principal features of its Registered Design had been infringed:

  1. A rectangular, biaxially symmetrical slab with four evenly, slightly rounded corners;
  2. A flat transparent surface without any ornamentation covering the entire front face of the device up to the rim;
  3. A very thin rim of constant width, surrounding and flush with the front transparent surface;
  4. A rectangular display screen surrounded by a plain border of generally constant width centred beneath the transparent surface;
  5. A substantially flat rear surface which curves upwards at the sides and comes to meet the front surface at a crisp outer edge
  6. A thin profile, the impression of which is emphasised by (5.) above;
  7. Overall, a design of extreme simplicity without features which specify orientation

Lord Birss recognised that these seven features could not each be analysed in isolation, stating at paragraph 32:

I must bear in mind that it is the overall impression which counts and not a verbalised list of features.

At paragraphs 53 and 54 His Lordship then set out what he believed to be “the correct approach overall” in determining Design Right infringement (note that the “design corpus” can broadly be understood as the design features normally included in the designs existing in the sector concerned):

The exercise must start with identifying the informed user and the existing design corpus. The overall impression is something produced on the informed user.

Although the outcome depends on overall impression, as a practical matter the design must be broken down into features. Each feature needs to be considered in order to give it appropriate significance or weight. Each feature needs to be considered in three respects. A feature dictated solely by function is to be disregarded. As long as it is not disregarded, each feature must be considered against the design corpus and it must be considered from the point of view of design freedom.

And at paragraph 64:

I have to decide whether the Samsung tablets produce a different overall impression on the informed user from that produced by the Apple design. In order to assess that, part of the task is to go through the list of features and similarities relied on “to consider to what extent they had technical significance and thus affected design freedom” (per Jacob LJ in Dyson v Vax [2012] FSR 4 at paragraph 22). In order to perform that task I need to know whether and to what extent there may be technical reasons for certain features. The issue is not simply a binary question of whether a given feature is dictated solely by function or not.

Design aspects which led to significant debates at trial

The front face of the Galaxy was considered to be extremely similar to the iPad.  While the shape of a screen may be rectangular for functional reasons, designers have freedom about what the rest of the design may look like. 

The rounded corners of the Galaxy also provoked controversy.   The expert witness for Samsung provided evidence that rounded corners are preferred for manufacturing reasons (it is easier to make them, especially by plastics injection moulding) and for ergonomic reasons (they are comfortable, safe and easy to use). He also explained that a large degree of rounding will reduce the display size or increase the size of the device and risks wasting volume. (The latter is important because these devices are made as thin as possible and a smaller volume means less room for components.)

The expert witness for Apple, Mr Ball (an industrial designer and inventor particularly involved with the hand held computer called the Pepper Pad), did not accept that rounded corners were chosen for purely functional reasons.  He referred to the IBM ThinkPad notebook computer from 2005 and an IBM ThinkPad X41 tablet from 2005 which has edges which appear sharp.

(It’s interesting to note that counsel for Samsung submitted that Mr Ball was not impartial (in other words an “Apple Man”), but Judge Birss rejected the submission.)

Front, back and sides

Reaching his conclusions, at paragraph 182 Judge Birss teetered on the brink of becoming an Apple Man himself, delivering his sure to be infamous “cool” verdict:

The extreme simplicity of the Apple design is striking. Overall it has undecorated flat surfaces with a plate of glass on the front all the way out to a very thin rim and a blank back. There is a crisp edge around the rim and a combination of curves, both at the corners and the sides. The design looks like an object the informed user would want to pick up and hold. It is an understated, smooth and simple product. It is a cool design.

Unfortunately for Apple, Judge Birss was not finished, and at paragraph 190 his appreciation of how the iPad was cooler than the Galaxy actually handed Samsung victory:

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.

Apple has 21 days to appeal against this ruling. 

Personally I find judgements as to Registered Designs incredibly subjective, and I think another judge on another day may well have reached another conclusion.  Certainly, it does seem odd that just because Samsung has been unable to make something as “cool” as the iPad, it has avoided being found guilty of infringement. 

Add to this the fact that it was Judge Birss who was behind the very controversial Temple Island Collection Ltd copyright judgement in January, and it seems a fair bet that Apple will not stop the proceedings here.

Brodies launches Intellectual Property survey on how organisations value their intellectual assets

In conjunction with ADS, SCDI and ScotlandIS, Brodies is launching a 60 second survey to identify how key intellectual property (IP) assets are dealt with and the IP issues which matter most to businesses today. We want to hear your views and appreciate your participation.

Year on year investment in the UK in intangible assets such as IP is higher than investment in traditional physical assets such as machinery or premises. IP rights, whether to a brand, design or manufacturing process, are often the most valuable asset that a business owns.

For any business to maintain a competitive advantage in the marketplace and maximise the return on investment, IP rights require to be properly managed or they will simply go to waste. Are you confident that you are making the most of your IP?

Please click here to take part (anonymously) in our 60-second survey and let us know what matters most to you in intellectual property.

We look forward to sharing the results with you.

Thanks for taking part!

Robert Buchan

PS here is our launch advert from this morning’s edition of The Herald. Use the QR code or the link above to let us know your views:

Brodies advert in The Herald 20 June 2012 launching the IP survey

Twitter: @BrodiesTechBlog feed

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