In the design patent dispute between Apple Inc., USA, and Samsung Electronics GmbH, Schwalbach, and Samsung Electronics Co. Ltd., South Korea, the 20th Civil Senate of the Higher Regional Court has ruled that Samsung may not market either the "Galaxy Tab 10.1" tablet PC or the "Galaxy Tab 8.9" tablet PC in Germany.
Apple Inc. is defending itself against the launch of the Samsung tablet PC on the German and European market. In a ruling dated September 9, 2011, the Düsseldorf Regional Court prohibited the German subsidiary of Samsung's South Korean parent company from manufacturing, importing or placing the "Galaxy Tab 10.1" on the market in the European Union. The parent company was prohibited from doing so for the territory of the Federal Republic of Germany. With regard to the South Korean parent company, a Europe-wide ban was ruled out because the Düsseldorf Regional Court had no international jurisdiction in this respect. Apple Inc. had not been able to credibly demonstrate that the German subsidiary was acting on behalf of the parent company, which would have been necessary for the Regional Court to have jurisdiction. Both parties have appealed against this ruling. Samsung is seeking a reversal of the ban, and Apple Inc. is seeking Europe-wide application of the ban, including against the South Korean parent company.
By order of 15 September 2011, the Düsseldorf District Court also dismissed an application by Apple Inc. to prohibit the distribution of the "Galaxy Tab 8.9" in the European Union. The Regional Court had assumed that a new injunction was not necessary because the injunction from the judgement of 9 September 2011 also covered the smaller tablet PC. Apple Inc. has filed an immediate appeal against this decision.
After the 20th Civil Senate of the Higher Regional Court had heard oral arguments in both proceedings on 20 December 2011, the Senate decided today that the distribution of the two challenged tablet models in Germany is unlawful.
The distribution of the "Galaxy Tab 10.1" violates the Unfair Competition Act because the Samsung model imitates the Apple tablet "iPad" in an unfair manner (§ 4 No. 9 b) Unfair Competition Act). Samsung was taking unfair advantage of the outstanding reputation and prestige value of the "iPad".
On the other hand, Samsung had not infringed the design registered by Apple. With regard to the design patent claim, the Senate - unlike the District Court - also assumed Community-wide jurisdiction with regard to the Samsung parent in South Korea. The German Samsung subsidiary was to be regarded as a "branch" of the Samsung parent. Samsung South Korea had to accept the designation of the German subsidiary as a "sales branch" on the internet. However, the scope of protection of the Apple design was limited. An older US patent application, the so-called "Ozolins design", which had been applied for by another company for a flat screen, already had a frameless flat screen. Moreover, the "Galaxy Tab 10.1" was sufficiently different from the design applied for by Apple. The design applied for consisted of two aesthetically perceptible components, a shell and a front covering it. The "Galaxy Tab 10.1", on the other hand, had a three-part construction, consisting of a front, a back and an interlocking frame.
Since the scope of application of the Unfair Competition Act - unlike Community design protection - is limited to Germany, the prohibition only applies to the Federal territory.
With regard to the "Galaxy Tab 8.9", the Higher Regional Court agreed with the opinion of the Regional Court that the order issued with regard to the "Galaxy Tab 10.1" also covered the "Galaxy Tab 8.9".
Today's decision does not concern the successor model "Galaxy Tab 10.1 N". With regard to the "Galaxy Tab 10.1 N" tablet, the Düsseldorf Regional Court heard oral proceedings on 22 December 2011 and will issue a decision on 9 February 2012 (reference number: 14c O 292/11).
The decision is final.
File reference:
"Galaxy Tab 10.1": Düsseldorf Regional Court, file number 14c O 194/11, Düsseldorf Higher Regional Court, file number I 20 U 175/11
and
"Galaxy Tab 8.9": Düsseldorf Regional Court, file number: 14c O 219/11, Düsseldorf Higher Regional Court, file number I 20 U 126/11
Source: Press release of the OLG Düsseldorf
Goldberg Attorneys at Law 2012
Attorney at Law Michael Ullrich, LL.M. (Information Law)
Specialist attorney for information technology law
E-mail: info@goldberg.de
