Mobile Devices

Elisabeth Fink Boards of Appeal, OHIM

Patrice de CandéGeneral Partner of de Candé-Blanchard

Chris Carani McAndrews, Held & Malloy Ltd.

Chair: Darren Smyth Partner in Charge, EIP Elements Practice Group

Designs for Mobile Devices

Darren Smyth Partner in Charge, EIP Elements Practice Group

The registered design

RCD 000181607-0001 – front view

The registered design

RCD 000181607-0001 – rear view

The alleged infringement

Samsung Galaxy Tab 7.7

Summary

Five points of interest:

i) use of dotted lines in representations and their meaning;

ii) significance of the existing design corpus;

iii) nature of the product and relationship with prior designs

relating to different products;

iv) features dictated by technical function; and

v) “informed user/ordinary observer” and test of “same/different

overall impression”.

Outline of session

Session will present perspectives from:

UK (Darren Smyth)

Germany and Netherlands (Elisabeth Fink)

France (Patrice de Candé)

USA (Chris Carani)

i) use of dotted lines in representations and their meaning

OHIM Guidelines for Examination state at 11.4:Dotted lines may be used in a view either to indicate the elements for which no protection is sought or to indicate portions of the design which are not visible in that particular view, i.e. non-visible lines.

Judge Birss decided:“the dotted lines would be understood as showing that there is an edge visible under the glass.”

Sir Robin Jacob: “a complicated point based on the guidelines for examination.”

i) use of dotted lines in representations and their meaning

Similar decision by Judge Birss in recent case Kohler Mira Ltd v

Bristan Group Ltd [2013] EWPCC 2 (28 January 2013) in Patents

County Court in UK

ii) significance of the existing design corpus

Judge Birss:

“The exercise must start with identifying the informed user and the existing design corpus.

… as a practical matter the design must be broken down into features. … .

Each feature needs to be considered in three respects. A feature dictated solely by function is to be disregarded. As long as it is not disregarded, each feature must be considered against the design corpus and it must be considered from the point of view of design freedom.”

ii) significance of the existing design corpus

Recital 14 of Designs Regulation:

The assessment as to whether a design has individual character

should be based on whether the overall impression produced on an

informed user viewing the design clearly differs from that produced

on him by the existing design corpus, taking into consideration the

nature of the product to which the design is applied or in which it is

incorporated, and in particular the industrial sector to which it

belongs and the degree of freedom of the designer in developing

the design.

ii) significance of the existing design corpus

Design Corpus:

Accepted as 51 pieces of prior art put forward by Samsung.

Features which appeared in design corpus given less weight.

This approach was not criticised on appeal.

iii) nature of the product and relationship with prior designs relating to different products

Article 36 states that indication of product “shall not affect the scope of protection of the design as such.”

In oral argument, Judge Birss indicated support for view that the nature of the product may be included in considering the scope of protection, where the product is clear from the representations.

iv) features dictated by technical function

No feature was held to be “solely dictated by technical function” except rectangular display screen.

Several features given less weight because of limited design freedom (eg in relation to border).

This approach was not criticised on appeal.

v) “informed user/ordinary observer” and test of “same/different overall impression”

Judge Birss stated:

“Having gone through the various features individually, it is

necessary to pull it all together and consider the overall

impression of the Apple design on an informed user.”

Court of Appeal approved, and confirmed importance of:

“overall conclusion, arrived at by using his own eyes and taking

into account both the design corpus and the extent to which

there was design freedom”

v) “informed user/ordinary observer” and test of “same/different overall impression”

Judge Birss stated:

“This case illustrates the importance of properly taking into

account the informed user's knowledge and experience of the

design corpus. When I first saw the Samsung products in this

case I was struck by how similar they look to the Apple design

… because they both have the same front screen … However

to the informed user (which at that stage I was not) these

screens do not stand out to anything like the same extent.”

v) “informed user/ordinary observer” and test of “same/different overall impression”

And in that context Judge Birss reached the conclusion:

“The informed user's overall impression of each of the Samsung Galaxy Tablets is the following. … They do not have the same understated and extreme simplicity which is possessed by the Apple design. They are not as cool. The overall impression produced is different.”

v) “informed user/ordinary observer” and test of “same/different overall impression”

And Sir Robin Jacob affirmed this conclusion:

“Overall I cannot begin to see any material error by the Judge.

… even if I were forming my own view of the matter, I would have come to the same conclusion and for the same reasons.”