No design right infringement by Samsung in The Netherlands

In the interim relief proceedings initiated by Apple against Samsung in the Netherlands, the President of the District Court in The Hague needed 65 pages to rule that Samsung did not (for the time being) infringe the Community design rights and copyrights of Apple with the introduction of its new tablet, and certain Galaxy smart phones.

Apple pleaded that Samsung would infringe various of its IP rights for its iPhone and iPad, including several European patents, Community designs and copyrights. Although the design right and copyright claims were rejected, the President found that the Samsung smart phones Galaxy S, SII and Ace infringe upon Apple’s EP 2.059.868 patent and ordered a European-wide injunction against Samsung, effective as from 7 weeks following service of the judgment.

Contrary to Apple’s argumentation, the President holds that only the appearance of the features of a design as included in the registration may be taken into account when assessing an infringement. Apple referred to par. 83 of the opinion of AG Mengozzi in the Pepsico Pogs case, were he stated that ‘it is entirely proper […] to take account of the actual goods characterised by a specific design.’ The President ruled that this approach is in conflict with the registration system and the principle of protection of legal interests of third parties.

Furthermore, according to the President it would raise important ‘legal uncertainty creating’ questions which are not apparent from Regulation 6/2002. Examples of such questions are: What criterion must be applied to assess whether or not a design is embodied in a product available on the market? And at what moment? How would you deal with this if there were various comparable (but relatively different) products on the market? And so on.

According to the President of the Distict Court it is not without reason that Article 19(1) of Regulation 6/2002 gives the holder of the registered design an exclusive right for a period longer than three years. The concrete embodiment of the design however does of course play a role with regard to unregistered designs (but this was not part of the discussions).