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IP advice: the importance of look and feel

IP advice: the importance of look and feel

New Electronics has partnered with leading intellectual property law firm D Young & Co CCP to offer guidance to companies on how to protect their IP. In this issue, D Young Partner Jonathan Jackson examines the judgement which determined Samsung's tablets were 'not as cool' as Apple's, but did not infringe a registered design.

On 9 July 2012, a decision was issued by the UK High Court regarding the continuing dispute between Samsung and Apple. The decision concerned Apple's Registered Community Design 000181607-0001 and a number of Samsung's Galaxy Tab tablet computers. Specifically, this case determined whether or not Samsung Galaxy tablets infringed Apple's RCD.

What is a Registered Community Design?
A Registered Community Design – or RCD – is a piece of intellectual property that provides protection for a product's external features. In particular, the protection defined by the RCD is provided by representations (such as drawings or photographs) of the product. Whereas a patent protects the technical way in which a product operates, an RCD protects the 'look and feel' of the exterior of a product.

In order to not infringe an RCD, a product must create a 'different overall impression' on the 'informed user'. This 'different overall impression' is determined, to a large extent, by the amount of freedom open to a designer. So, for example, in an area where there is a small amount of design freedom, a relatively small differences between the allegedly infringing product and the original product can create the 'different overall impression' required to not infringe the RCD.

The case
In order to decide whether the Samsung Galaxy tablets infringed Apple's RCD, the Judge firstly identified the 'informed user'. Secondly, the design was broken down into features which were considered similar between the Samsung Galaxy and the RCD. Thirdly, the overall significance of each feature was considered. A feature dictated solely by function was disregarded. As long as it was not disregarded, each feature was then considered against known design features in the relevant market and considered from the point of view of design freedom to determine whether there was a 'different overall impression' created.

The 'informed user' in this case was not disputed by either side and was defined as a user of handheld (tablet) computers.

In order to determine the issue of degree of design freedom and the features dictated solely by function, the Court directed that the parties may each call an expert and these experts were cross examined by the opposing party. This evidence is extremely valuable in this type of proceedings as it puts the designs into context and provides guidance for the Court.

In his decision, the Judge determined the similar features. The Judge was keen to stress that objects in this field are held in the users' hands, so although the front of the device is important, the informed user would pick up the device and look at the back.

The front of the Samsung tablets was judged to be strikingly similar to the RCD. However, the Judge did comment that the front view of the RCD was very similar to that of existing known designs. In other words, neither the RCD nor the Samsung tablet was much different to previous designs.

Given that the front of the RCD looked like many other designs in this area, determining whether the product gave a different overall impression required the informed user's attention to be drawn to the differences at the back and sides of the product and such differences would be enhanced considerably.

The details of the side edges between the RCD and the Samsung tablets were not judged to be similar. The RCD had a pronounced flat side face which the informed user would see clearly and feel in a product made according to the representations. This flat face side is absent from the Samsung tablets, which have a much thinner edge. The back of the Samsung tablets also had some unusual details which were absent from the RCD.

The Judge therefore concluded that the Samsung tablets were thinner than the RCD and had unusual details on the back. This meant that the Samsung tablets were judged not have the same understated and extreme simplicity as the RCD. Highlighting that our Judiciary is fashion conscious, the Judge concluded that Samsung tablets were 'not as cool' as the Apple RCD and so the overall impression was different. Therefore the Samsung Tablets did not infringe the RCD.

Conclusion
This case was interesting for a number of points. This case illustrates the importance of properly taking into account the informed user's knowledge and experience. The use of expert witnesses – and the cross examination of such witnesses – really assists in this process.

Additionally, it was interesting to note how the Judge looked beyond the front side of the Samsung Tablet and the RCD. The fact that these objects are designed and built to be handled by users meant that the design of the front is important, but not exclusively important. It is the overall impression of the totality of the design which will be decisive. This is a point worth noting in view of the increasing importance attributed to the design of handheld devices in the marketplace.

Finally, as Sir Jonathan Ive and the late Steve Jobs would surely appreciate, their tablet design has now been recognised judicially as being' cool'.

Further detailed information is available in the Knowledge Bank or by contacting a Partner at D Young & Co LLP. Both can be found at www.dyoung.com.

Author
D Young & Co LLP

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