How Cool Is That Design? Community Registered Designs Under The Spotlight

In the latest legal battle between Apple and Samsung over tablet computers, Samsung won in court. However, the judge decided Apple's design was distinguished from the Samsung version because it was "cool", potentially handing a huge marketing coup to Apple.

Over recent months the two companies have been busy suing each other in various jurisdictions in respect of patent or design infringement. The source of many of these arguments has been the highly-profitable tablet computer market. In the UK High Court last week in [2012] EWHC 1882 (Pat) His Honour Judge Colin Birss QC made the first substantive finding on the issues.

As is well known, Apple, with its iPad products, is the market leader. Samsung has been doing its utmost to get into the market and establish market share. Three versions of the Samsung Galaxy tablet (10.1, 8.9 and 7.7) were felt by Apple to be too close to its design as protected by Community registered design No. 000181607-0001. In fact neither of the current iPad models, the iPad or iPad2, is identical to the protected design.

This is the first case between the two parties that has gone all the way and involved a hearing on the substantive issue of infringement of the registered design. The question of validity, that in patent and design litigation so often goes hand-in-hand with infringement, is not considered in the present judgement largely because there are ongoing validity proceedings in respect of the registered design before OHIM.

The judgement is fairly entertaining, in as much as that is possible. It provides a good background to the law of designs in the UK and EU. The judgement contains a statement of the law and then a structured application of it to the points in question. The judge tells us who the "informed user" is and then identifies a number of individual design features of the protected Apple design. For each of these, the judge then considers (i) the degree of freedom that a designer would have had, (ii) the prevalence of the feature in the design corpus, (iii) the degree of similarity between the Samsung products and the design feature and, (iv) the importance of the feature in the overall design.

The judge, however, then cautions against relying on a purely formulaic approach such as this and includes a section in which he specifically considers the overall impression produced by the Apple design on an informed user.

He goes on to compare the overall impression made by the Samsung tablets on the...