Apple Samsung intellectual property rights Application in Samsung v. Apple wars regarding Galaxy design concerning validity, jurisdiction, threats and expedition

Apple Samsung intellectual property rights

(1) Samsung Electronics (UK) Ltd (2) Samsung Electronics Co Ltd  v Apple Inc

High Court of Justice (Chancery Division)

[2012] EWHC 889 (Ch)

Apple Samsung intellectual property rights Facts 

Community registered design – Declarations of non-infringement-Jurisdiction – Threats -Whether permission to serve out of the jurisdiction to be set aside – Whether later claim for declaration of non-infringement before the national court to be stayed-Interpretation of art 9(1(1) of the Community Designs Regulations – Whether good arguable case – Expedition

One of the several applications concerning  UK aspects of Apple’s dispute with Samsung. This application was brought in the UK by part of Samsung against Apple Inc regarding the Samsung Galaxy tablet. At the core of the action was whether Apple’s registered Community Design no. 181,607-0001 for the iPad infringes the Galaxy design. It raised the issue of the correct interpretation of the jurisdiction provisions in the Community Design Regulation. It also raised issues on the groundless threats provisions.

At the time, in the various proceedings on the continent, specifically in Germany and the Netherlands, Apple was seeking injunctive relief on a pan-European basis against Samsung’s Galaxy. Although Apple had been successful for a time, at that time, the only injunctions outstanding were in Germany, covering Germany alone, granted on a competition law basis, not on the basis of a registered design.  Further the claimants’ and other Samsung companies were running concurrent OHIM proceedings claiming that Apple’s registered design was invalid.

In these proceedings the Samsung companies sought declarations of non-infringement against Apple and also sought an injunction restraining Apple from making threats to sue for infringement. Apple sought to challenge the right of Samsung to bring their proceedings on the various basis which were the subject of the application. Samsung sought an order for an expedited hearing of the trial in the action (provided the claims survived Apple’s attacks).

Mr Justice Mann’s judgement was as follows:

On declaration of non-infringement – for the Korean Samsung

Apple argued that Samsung Electronics could not fulfil the jurisdictional requirements for suing in England and Wales because no relevant party has a domicile or establishment in this jurisdiction.

Under Article 81 of the Community Design Regulation, Community design courts have exclusive jurisdiction over, inter alia, actions for declarations of non-infringement of Community designs, Article 82(2) provides over whom jurisdiction can be exercised. Samsung argued that although it could not aver that it had an establishment in England and Wales, Apple was “estopped” from denying it.

The Court found that it had no jurisdiction for entertaining Samsung’s claim for a declaration of non-infringement.

 On declaration of non-infringement – for the UK Samsung

Apple argued that it had counter-claimed against Samsung UK for infringement of the registered design. It accepted that Samsung UK is domiciled in England and Wales. However the claim and counterclaim should be stayed as the matters raised were not suitable for declatory proceedings because it would lead to conflicting judgments in OHIM and in England and Wales, and because the declaration would serve no useful purpose and at the core of the matter was validity for which the court had no jurisdiction.

Apple failed to have this part of the action stayed.

 Apple Samsung intellectual property rights Threats

On the issue of groundless threats, Samsung claim for groundless threat of infringement proceedings under the Community Design regulations 2005 was dismissed. There was no actionable threat.

Apple Samsung intellectual property rights Expedition

An order for expedition was made. Samsung’s argument for expedition were that it wanted to remove uncertainty as to whether its products infringed. It was concerned about losing market share, especially in the significant UK market. A degree of certainty was needed for the future of Galaxy that did not exist while Apple cherry picked proceedings in various European territories. There was confidential information involved. The burden on the court’s time was minimal.


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