Samsung Electronics (UK) Ltd & Anor v Apple Inc [2012] EWHC 889 (Ch) (04 April 2012)

Samsung Electronics (UK) Ltd & Anor v Apple Inc [2012] EWHC 889 (Ch) (04 April 2012)

SEC's claim for a declaration of non-infringement was dismissed for lack of jurisdiction as it failed to establish domicile or establishment in the UK and did not make a positive case on establishment. Samsung UK's claim for a declaration of non-infringement was allowed to proceed and not stayed, as Article 91 of the Regulation does not require a stay for such actions even if validity is in issue before OHIM. The claims for groundless threats were dismissed as the alleged conduct did not amount to actionable threats to sue in the UK. Expedition was granted for the remaining claims, but not to the extent sought by Samsung; the trial was ordered to be expedited to June, not April.

Citation
[2012] EWHC 889 (Ch)
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 / Interlocutory Applications Within Ongoing Proceedings
Outcome
SEC's claim for a declaration of non-infringement dismissed for lack of jurisdiction; Samsung UK's claim for a declaration of non-infringement proceeds; claims for groundless threats dismissed; order for expedition granted for June trial.
Legal Topics
Registered Community Designs, Jurisdiction, Declaratory Relief, Groundless Threats, Expedition of Proceedings
Intellectual Property Civil Procedure European Union Law Registered Community Designs Jurisdiction Declaratory Relief Groundless Threats Expedition of Proceedings

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 4 Authorities cited 7 Party arguments 2 Amounts and remedies 3
Sign in to unlock

Parties

Samsung Electronics (UK) Ltd

Claimant

Samsung Electronics Co Ltd

Claimant

Apple Inc

Defendant

Procedural Posture

Civil / Interlocutory Applications Within Ongoing Proceedings

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 related OHIM proceedings
  3. 3 Whether Apple's conduct amounted to actionable groundless threats under the Community Design Regulations 2005

Ratio Decidendi

SEC's claim for a declaration of non-infringement was dismissed for lack of jurisdiction as it failed to establish domicile or establishment in the UK and did not make a positive case on establishment. Samsung UK's claim for a declaration of non-infringement was allowed to proceed and not stayed, as Article 91 of the Regulation does not require a stay for such actions even if validity is in issue before OHIM. The claims for groundless threats were dismissed as the alleged conduct did not amount to actionable threats to sue in the UK. Expedition was granted for the remaining claims, but not to the extent sought by Samsung; the trial was ordered to be expedited to June, not April.

Court Disposition

SEC's claim for a declaration of non-infringement dismissed for lack of jurisdiction; Samsung UK's claim for a declaration of non-infringement proceeds; claims for groundless threats dismissed; order for expedition granted for June trial.

Orders

  • SEC's claim for declaration of non-infringement struck out for want of jurisdiction
  • Samsung UK's claim for declaration of non-infringement to proceed