Mobile Devices

1. Mobile Devices

2. Elisabeth Fink Boards of Appeal, OHIM Patrice de Candé General Partner of de Candé-Blanchard Chris Carani McAndrews, Held & Malloy Ltd. Chair: Darren Smyth Partner in Charge, EIP Elements Practice Group

3. Designs for Mobile Devices Darren Smyth Partner in Charge, EIP Elements Practice Group

4. RCD 000181607-0001 – front view Theregistereddesign

5. RCD 000181607-0001 – rear view Theregistereddesign

6. Samsung GalaxyTab 7.7 Theallegedinfringement

7. 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”. Summary

8. Session will present perspectives from: UK (Darren Smyth) Germany and Netherlands (Elisabeth Fink) France (Patrice de Candé) USA (Chris Carani) Outline of session

9. 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

10. 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 i) use of dotted lines in representations and their meaning

11. 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

12. 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

13. 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. ii) significance of the existing design corpus

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

15. 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. iv) features dictated by technical function

16. 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”

17. 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”

18. And in thatcontextJudgeBirssreachedtheconclusion: “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”

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