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 decision of September 15, 2011, the District Court of Düsseldorf further rejected an application by Apple Inc. to prohibit the distribution of the “Galaxy Tab 8.9” in the European Union. The District Court had assumed that a renewed injunction was not necessary because the order from the judgment of September 9, 2011, also covered the smaller tablet PC. Apple Inc. filed an immediate appeal against this decision.
After the 20th Civil Senate of the Higher Regional Court held oral hearings in both proceedings on December 20, 2011, the Senate ruled today that the distribution of the two contested tablet models in Germany is inadmissible.
The distribution of the “Galaxy Tab 10.1” violates the Act Against Unfair Competition because the Samsung model unfairly imitates Apple's “iPad” tablet (§ 4 No. 9 b) Act Against Unfair Competition). Samsung unfairly exploits the outstanding reputation and prestige value of the “iPad”.
However, Samsung did not infringe Apple's registered design patent. Regarding the design patent claim, the Senate – unlike the District Court – also affirmed community-wide judicial jurisdiction concerning the Samsung parent company in South Korea. The German Samsung subsidiary is to be considered a “branch” of the Samsung parent company. Samsung South Korea must be held to the designation of its German subsidiary as a “sales branch” on the internet. However, the scope of protection for Apple's design patent is limited. For instance, an older US patent application, the so-called “Ozolins Design,” which was filed by another company for a flat-panel display, already featured a frameless flat-panel display. Furthermore, the “Galaxy Tab 10.1” differs sufficiently from the design patent registered by Apple. The registered design patent is aesthetically perceptible as consisting of two components: a shell and a front cover. The “Galaxy Tab 10.1,” however, is constructed in three parts, comprising a front, a back, and an interlocking frame.
Since the scope of the Act Against Unfair Competition – unlike Community design protection – is limited to Germany, the prohibition applies only to the federal territory.
Regarding the “Galaxy Tab 8.9,” the Higher Regional Court concurred with the District Court's view that the order issued concerning the “Galaxy Tab 10.1” also encompassed the “Galaxy Tab 8.9.”
Today's decision does not concern the successor model “Galaxy Tab 10.1 N”. Regarding the “Galaxy Tab 10.1 N” tablet, the District Court of Düsseldorf held oral hearings on December 22, 2011, and will issue a decision on February 9, 2012 (File number: 14c O 292/11).
The decision is legally binding.
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 Higher Regional Court (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
