The parties were engaged in worldwide litigation disputing an alleged infringement of Apple’s registered design by Samsung’s Galaxy tablet computer. In this case, Samsung sought a declaration of non-infringement. Apple counterclaimed, alleging infringement, and said that under Regulation 91, the court had a duty to grant a stay where the issue was already before another court in Europe.
Held: The court refused Apple’s application for the order that Samsung’s claim for a declaration that the Galaxy did not infringe Apple’s registered design should be stayed. Samsung’s request for a declaration could not be said to challenge the validity of the registered design. Having refused that application the judge went on to give case management directions in respect of Samsung’s claim and Apple’s counterclaim (which was for infringement), under which both claim and counterclaim are to come on for hearing on an expedited timetable.
Mann J said: ‘The exception in Article 91 means what it says. Actions for declaration for non-infringement can continue even if validity is already in issue in OHIM. There is no need to reduce that concept to something with little value in the real world.’
Judges:
Mann J
Citations:
[2012] EWHC 889 (Ch)
Links:
Statutes:
Council Regulation (EC) No 6/2002 on Community designs 91(1), Community Design Regulations 2005 82
Jurisdiction:
England and Wales
Citing:
Cited – John Summers and Sons Limited v Cold Metal Process Co ChD 1948
It is unnecessary for a claimant in a threat case: ‘to prove that the defendant has in so many words said: ‘I intend to issue a writ against you for infringement . .’ The terms of the Act are satisfied if the defendant in the action is proved to . .
Cited – L’Oreal (UK) Limited and Another v Johnson and Johnson and Another ChD 7-Mar-2000
The claimant appealed against an order striking out their threat action for trade mark infringement, in respect of the words ‘No Tears’ when used for children’s shampoo.
Held: The court had to consider both the letter and the surrounding . .
Cited – Datacard Corporation v Eagle Technologies Ltd PatC 14-Feb-2011
In the context of patents, Arnold J accepted that ‘extent of protection’ was purely a question of the scope of the claims under Article 69(1) of the EPC, and that was a different concept to ‘the rights conferred’ under national UK law. . .
Cited – Dyson Ltd v Vax Ltd CA 27-Oct-2011
Appeal against rejection of claim of infringement of registered design. . .
Cited – Best Buy Co Inc and Another v Worldwide Sales Corporation Espana Sl CA 24-May-2011
Appeal against dismissal of claim of trade mark infringement threats by the defendants’ lawyers. The court was asked to consider whether a letter, described as ‘the September letter’ was an actionable threat.
Held: Lord Neuberger MR said: ‘In . .
Cited by:
Appeal from – Samsung Electronics (UK) Ltd v Apple Inc CA 30-May-2012
Samsung sought a declaration that it’s Galaxy tablet did not infringe Apple’s registered Community Design right. Apple now appealed against a refusal of a stay of the action. The court considered the possible jurisdictions to hear applications for . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 03 April 2022; Ref: scu.452472
