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IP Cases & Commentary – Details

2 April 2012

RCDs as an Additional Form of Rights Protection - European Perspectives and the Apple v Samsung Dispute

Jonathan Jackson & Scott Gardiner

Following on from an article we published in the February edition of this newsletter (in which we discussed national validation strategies for European patents), this article will consider how Registered Community Designs (RCDs) may be used as an additional method of rights protection. This is to be illustrated using the ongoing Apple/Samsung dispute where RCDs, in addition to patents, are being asserted by Apple against Samsung.

Regarding the RCD aspect of the above dispute, much of the focus has been in the German and Dutch courts. Interestingly, although the RCD is a unitary right which extends across the whole EU, the German and Dutch courts have adopted very different interpretations in relation to the scope of the respectively ‘protected’ rights. In particular, as will be discussed, for the same RCD, the German and Dutch courts reached completely different conclusions regarding the breadth and depth of protection afforded to a ‘minimalist’ design.

Germany

Having brought an action against Samsung in August 2011, Apple was successful in achieving a swift preliminary injunction against Samsung’s Galaxy Tab 10.1 computer. This preliminary injunction was granted on the basis that Apple would be likely to succeed at trial in relation to their RCD protecting the shape of their iPad and iPad2 products. The preliminary injunction ordered by the Court was initially made on a pan-European basis before being scaled back for jurisdictional reasons. Whilst this preliminary injunction has been upheld as recently as 31 January 2012, its commercial significance has been undermined for the following reasons:

  1. Although the preliminary injunction prohibiting the sale of the products within Germany applies to both Samsung’s German subsidiary and its parent company, only the German entity is prevented from making cross-border sales. Samsung Electronics Co. Ltd. (the parent company) is therefore permitted to continue selling the products outside of the territory.
  2. Although upheld by the Düsseldorf Higher Regional Court, the decision was based upon a violation of German competition law and not on Apple’s substantive design right. From a strategic perspective, a decision based upon the latter may have proven much more valuable to Apple.
  3. On 9 February 2012, the Düsseldorf Higher Regional Court determined that Samsung’s modified Galaxy Tab 10.1N (a ‘work-around’ product) did not infringe Apple’s relied upon RCD. As a result, the decision of 31 January (upholding the injunction against the Galaxy Tab 10.1) is all but rendered irrelevant.
  4. A full trial of the issues is still to be heard, which may not necessarily follow the lead of the preceding Court decisions which have granted (and confirmed) Apple’s injunction.
  5. So far within Germany, the injunction has only had a temporary disruptive effect, not least because Samsung’s European logistics centre is in the Netherlands.

Although at first it may appear that within Germany, the protection afforded by registered designs is limited, it should be noted that Apple has had greater success in obtaining swift injunctive relief where it has relied upon its RCDs than when relying upon certain of its patents.

Evidencing the potential of RCDs to function as a useful tool in a litigant’s armoury, the Düsseldorf Court held that in its opinion, “Apple’s EU design rights grant a medium range of protection, if not a broad one”. In contrast to the rather more costly and lengthy litigation associated with pursuing patent infringement actions, (as Apple is doing against Samsung and a number of other companies in separate disputes) it remains that RCDs may to some extent, provide a more economic and timely means of obtaining injunctive relief.

The Netherlands

As mentioned, Apple also commenced an action against Samsung in the Netherlands, asserting the same RCD as asserted in Germany. However, whilst responsive to Apple’s patent infringement claims, the District Court in The Hague did not agree that Samsung’s Tablet computers were infringing the RCDs held by Apple in relation to their iPad and iPad2 products. In particular, the District Court in The Hague dismissed Apple’s request for an injunction against the Galaxy Tab, feeling that the minimalist design afforded significantly narrower protection to Apple than that afforded by the German Court. This contrary conclusion was reached despite the Dutch Court having the earlier German decision available to it. On the facts, it appears that the Rechtbank’s-Gravenhage gave their attention to ‘prior art’ which was not considered in Düsseldorf, therefore justifying their departure from the preceding German decision. In light of the very different interpretations of RCDs by the courts in Germany and the Netherlands, manufacturers / brand owners should consider adapting their IP protection strategies accordingly.

So, what can RCDs protect?

Usefully, RCDs are able to protect certain aspects of a product which are often excluded from the scope of patent protection. In particular, where patents protect the technology associated with a product, RCDs protect the ‘look and feel’ of the product. By way of an example, RCDs may be used to protect both two-dimensional and three-dimensional shapes. This form of IP may prove to be of increasing importance in future disputes.

Notably, RCDs enable manufacturers to protect elements of their products which relate solely to their look and feel, such as icons, typefaces and more generally the overall ’get up’. In an increasingly competitive marketplace, the ability to obtain protection for such elements is particularly important. This is particularly the case in the area of smartphones and tablets, where manufacturers look to develop brand-specific Generated User Interfaces (GUIs). This is particularly the case with the introduction of Android v4.0 and the Apple OS (and the imminent introduction of Windows 8), which are used as the same GUI across the respective smartphone and tablet product families for various manufacturers. These GUIs are the means by which users interact with the product and enable its various functions to be carried out. Safeguarding key features within a product’s user interface is therefore fundamental as they constitute the basis of the inherent ‘look and feel’ which is often king in the retail market, and in particular in the smartphone and tablet market.

Lessons learnt

We have reviewed the Samsung and Apple dispute, but what have we learnt? We learnt in our previous article that the Dutch courts and the German courts tend to be pro-patentee and seem happy to grant preliminary injunctions. This is particularly useful in respect of the Netherlands as this is commonly a port of entry into the EU. Also, the London Agreement means that patent protection can be achieved relatively cheaply in the Netherlands.

We also have learnt that RCDs can be obtained to cover the look and feel of a product. However, although the RCD is a unitary right which extends across the whole EU, the national courts can have completely contrary views when deciding the scope of protection provided by the RCD. We have also learnt that RCDs may be an increasingly useful form of IP, especially in the electronics field, where the ‘look and feel’ of a product, and in particular the “look and feel” of a product’s GUI is becoming the differentiator between competing products.

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