Samsung Electronics (UK) Ltd & Anor v Apple Inc

Samsung Electronics (UK) Ltd & Anor v Apple Inc

The English court has no jurisdiction over SEC's claim for a declaration of non-infringement as SEC failed to assert a positive case on establishment in the UK. Samsung UK's claim for a declaration of non-infringement is not subject to a stay under Article 91, as the Regulation expressly allows such actions to proceed even if validity is in issue before OHIM. The facts relied on by Samsung do not amount to actionable threats under the Community Design Regulations 2005. Expedition is justified but only to a June trial date, not earlier.

Parties
Claimant: Samsung Electronics (UK) Ltd; Claimant: Samsung Electronics Co Ltd; Defendant: Apple Inc
Jurisdiction
England and Wales
Judgment Date
04 April 2012
Procedural Posture
Civil Intellectual Property / Interlocutory Applications (jurisdiction, Stay, Threats, Expedition)
Outcome
SEC's claim for a declaration of non-infringement struck out for want of jurisdiction; Samsung UK's claim for a declaration of non-infringement proceeds; application for stay refused; threats action struck out; order for expedition granted for June trial.
Legal Topics
Community Registered Design, Jurisdiction, Groundless Threats, Expedition of Proceedings, Non Infringement Declarations
Intellectual Property Law Civil Procedure Community Registered Design Jurisdiction Groundless Threats Expedition of Proceedings Non Infringement Declarations

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Parties

Samsung Electronics (UK) Ltd

Claimant

Samsung Electronics Co Ltd

Claimant

Apple Inc

Defendant

Procedural Posture

Civil Intellectual Property / Interlocutory Applications (jurisdiction, Stay, Threats, Expedition)

Legal Issues

  1. 1 Whether the English court has jurisdiction over SEC's claim for a declaration of non-infringement
  2. 2 Whether Samsung UK's claim for a declaration of non-infringement should be stayed due to parallel OHIM proceedings
  3. 3 Whether Apple made actionable groundless threats under the Community Design Regulations 2005

Ratio Decidendi

The English court has no jurisdiction over SEC's claim for a declaration of non-infringement as SEC failed to assert a positive case on establishment in the UK. Samsung UK's claim for a declaration of non-infringement is not subject to a stay under Article 91, as the Regulation expressly allows such actions to proceed even if validity is in issue before OHIM. The facts relied on by Samsung do not amount to actionable threats under the Community Design Regulations 2005. Expedition is justified but only to a June trial date, not earlier.

Court Disposition

SEC's claim for a declaration of non-infringement struck out for want of jurisdiction; Samsung UK's claim for a declaration of non-infringement proceeds; application for stay refused; threats action struck out; order for expedition granted for June trial.

Orders

  • SEC's claim for declaration of non-infringement dismissed for lack of jurisdiction
  • Samsung UK's claim for declaration of non-infringement to proceed