Apple has launched an all-out war on Samsung in respect of the latter’s “Galaxy” range of smartphones and tablets, claiming infringement of various IP rights. In Dusseldorf first an EU wide injunction was granted to Apple then only a Germany wide version but that is not the end of the story as Christina Schulte-Braucks reports.
Topic: Intellectial property
Who: Apple vs. Samsung
When: August 2011
Where: Regional Court of Düsseldorf, Germany
Law stated as at: August 2011
Apple is fighting many battles against Samsung’s new “Galaxy” range of smartphones and tablet PCs all over the world, claiming infringement of basically every intellectual property right available (patents, trade marks, designs…).
In the US, Apple recently applied for a preliminary injunction based on the alleged infringement of four of its patents, whilst Samsung invoked science fiction such as Stanley Kubrick's “2001: A Space Odyssey” and “Star Trek” as prior art to the iPad design patent in its defence.
In the Netherlands, although a preliminary injunction was issued against Samsung’s Galaxy smartphones and will take effect in mid-October, the Court refused such an injunction in respect of the Galaxy Tabs.
In Australia, the launch of the Galaxy Tab will be delayed at least until the end of September due to a similar court injunction and upcoming hearings.
In Germany, Apple applied for an interim injunction at the beginning of August which would prohibit Samsung to market and advertise its Galaxy Tab 10.1 not only in Germany, but in the entire European Union.
In the current German proceeding, Apple is claiming infringement of its registered Community Design No. 000181607-0001 for the territory of the EU as well as unfair competition due to the misleading imitation of its iPad design. The application is directed at two companies, the South Korean Samsung Electronics Co., Ltd. and its German sales subsidiary.
The Regional Court of Düsseldorf, which is one of the competent courts in Germany according to Article 80 of the Community Design Regulation, first granted the injunction on 9 August 2011 in respect of 26 EU member countries.
But only a few days later, on 16 August, the Court granted a motion by Samsung deciding that the injunction should not be enforceable against Samsung outside of Germany. At the oral hearing, which took place on 25 August 2011, the Court upheld this decision, thus banning the Galaxy Tab from the German market, but not throughout Europe.
Although the Court indicated that in its view, Apple’s registered design was valid and the Galaxy Tab amounted to an infringement thereof, it expressed doubts regarding its cross-border jurisdiction and on whether its injunction could be enforced against the Korean parent as well as the German subsidiary.
The alternative claim raised by Apple based on a misrepresentation according to § 4 Nr. 9 of the German Act against Unfair Competition (UWG) could in any event only warrant an injunction for the German territory.
Why this matters:
The ruling in this episode of the Apple vs. Samsung saga is scheduled for 9 September 2011. The Court has ignored Samsung's urgent request to hand down its decision before the start of the international consumer electronics fair IFA in Berlin on 2 September.
It will be particularly interesting to see how the Regional Court of Düsseldorf will handle the delicate questions relating to international jurisdiction and whether it will uphold the injunction for the whole of Europe or merely the German market, and in relation to both Samsung Korea or only Samsung Germany.
Furthermore, Samsung will certainly appeal to the Higher Regional Court of Düsseldorf. In the appeal proceedings, the Higher Regional Court might also (re-)examine the requirement of urgency more closely: An interim injunction may only be granted if the applicant gained knowledge no longer than four weeks prior to the date of application. In view of the ongoing worldwide dispute, it might be difficult for Apple to claim that they had no knowledge of the Galaxy Tabs’ design prior to its marketing in Germany.
Osborne Clarke, Cologne