Montres Breguet SA & Ors v Samsung Electronics Co Ltd & Anor (Rev1) [2023] EWCA Civ 1478 (15 December 2023)

Montres Breguet SA & Ors v Samsung Electronics Co Ltd & Anor (Rev1) [2023] EWCA Civ 1478 (15 December 2023)

Samsung's conduct, including app review, marketing, customer support, and revenue sharing, went beyond mere technical facilitation and amounted to use of Swatch trade marks in its own commercial communications. The signs were used in relation to smartwatches, as the Dial Branding could lead third parties to perceive the origin of the watch as Swatch. Samsung was not entitled to the Article 14(1) defence, as its involvement was not sufficiently passive to qualify for safe harbour protection.

Citation
[2023] EWCA Civ 1478
Parties
Claimant/respondent: Montres Breguet S.A.; Claimant/respondent: Blancpain S.A.; Claimant/respondent: Montres Jaquet Droz S.A.; Claimant/respondent: Omega S.A.; Claimant/respondent: Compagnie des Montres Longines, Francillon S.A.; Claimant/respondent: Tissot S.A.; Claimant/respondent: Mido S.A.; Claimant/respondent: Hamilton International S.A.; Claimant/respondent: Swatch S.A.; Claimant/respondent: Glashütter Uhrenbetrieb GmbH; Defendant/appellant: Samsung Electronics Co. Ltd; Defendant/appellant: Samsung Electronics (UK) Limited
Jurisdiction
England and Wales
Judgment Date
15 December 2023
Procedural Posture
Appeal / Court of Appeal Judgment
Outcome
Appeal dismissed
Legal Topics
Trade Mark Infringement, Liability of Online Platforms, E Commerce Directive, Consumer Perception, Safe Harbour Provisions
Intellectual Property Technology Law European Union Law Trade Mark Infringement Liability of Online Platforms E Commerce Directive Consumer Perception Safe Harbour Provisions

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Parties

Montres Breguet S.A.

Claimant/respondent

Blancpain S.A.

Claimant/respondent

Montres Jaquet Droz S.A.

Claimant/respondent

Omega S.A.

Claimant/respondent

Compagnie des Montres Longines, Francillon S.A.

Claimant/respondent

Tissot S.A.

Claimant/respondent

Mido S.A.

Claimant/respondent

Hamilton International S.A.

Claimant/respondent

Swatch S.A.

Claimant/respondent

Glashütter Uhrenbetrieb GmbH

Claimant/respondent

Samsung Electronics Co. Ltd

Defendant/appellant

Samsung Electronics (UK) Limited

Defendant/appellant

Procedural Posture

Appeal / Court of Appeal Judgment

Legal Issues

  1. 1 Whether Samsung used Swatch trade marks in its own commercial communications
  2. 2 Whether use of signs was in relation to smartwatches as well as apps
  3. 3 Whether Samsung has a defence to financial remedies under Article 14(1) of the e-Commerce Directive

Ratio Decidendi

Samsung's conduct, including app review, marketing, customer support, and revenue sharing, went beyond mere technical facilitation and amounted to use of Swatch trade marks in its own commercial communications. The signs were used in relation to smartwatches, as the Dial Branding could lead third parties to perceive the origin of the watch as Swatch. Samsung was not entitled to the Article 14(1) defence, as its involvement was not sufficiently passive to qualify for safe harbour protection.

Court Disposition

Appeal dismissed

Orders

  • Samsung found primarily liable for trade mark infringement
  • Financial remedies not excluded by Article 14(1) e-Commerce Directive