MONTRES BREGUET S.A. & Ors v SAMSUNG ELECTRONICS CO. LTD & Anor

MONTRES BREGUET S.A. & Ors v SAMSUNG ELECTRONICS CO. LTD & Anor

Samsung was liable for trade mark infringement because its conduct in operating the app store, reviewing and making available watch face apps with Swatch group marks, and promoting the availability of such apps, constituted active use of the signs in the course of trade in its own commercial communications. The use was in relation to goods (smartwatches and similar) for which the marks were registered, and there was a likelihood of confusion and/or unfair advantage taken of Swatch's reputation. Samsung's involvement was not merely technical or passive, so it could not rely on the e-Commerce Directive Article 14 defence.

Parties
Claimant: Montres Breguet S.A.; Claimant: Blancpain S.A.; Claimant: Montres Jaquet Droz S.A.; Claimant: Omega S.A.; Claimant: Compagnie des Montres Longines, Francillon S.A.; Claimant: Tissot S.A.; Claimant: Mido S.A.; Claimant: Hamilton International S.A.; Claimant: Swatch S.A.; Claimant: Glashütter Uhrenbetrieb GmbH; Defendant: Samsung Electronics Co. Ltd; Defendant: Samsung Electronics (UK) Limited
Jurisdiction
England and Wales
Judgment Date
20 May 2022
Procedural Posture
Intellectual Property (trade Mark Infringement) / Liability Trial, First Instance Judgment
Outcome
Claim allowed in part; trade mark infringement established against Samsung for specified apps.
Legal Topics
Trade Mark Infringement, Likelihood of Confusion, E Commerce Directive Defence, Use in the Course of Trade, Similarity of Goods/services, Reputation and Unfair Advantage, App Store Liability
Intellectual Property Commercial Law E Commerce Trade Mark Infringement Likelihood of Confusion E Commerce Directive Defence Use in the Course of Trade Similarity of Goods/services +2 more

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Parties

Montres Breguet S.A.

Claimant

Blancpain S.A.

Claimant

Montres Jaquet Droz S.A.

Claimant

Omega S.A.

Claimant

Compagnie des Montres Longines, Francillon S.A.

Claimant

Tissot S.A.

Claimant

Mido S.A.

Claimant

Hamilton International S.A.

Claimant

Swatch S.A.

Claimant

Glashütter Uhrenbetrieb GmbH

Claimant

Samsung Electronics Co. Ltd

Defendant

Samsung Electronics (UK) Limited

Defendant

Procedural Posture

Intellectual Property (trade Mark Infringement) / Liability Trial, First Instance Judgment

Legal Issues

  1. 1 Whether Samsung used Swatch group trade marks in the course of trade via its app store
  2. 2 Whether the use was in relation to identical or similar goods/services
  3. 3 Whether there was a likelihood of confusion or unfair advantage/detriment to reputation

Ratio Decidendi

Samsung was liable for trade mark infringement because its conduct in operating the app store, reviewing and making available watch face apps with Swatch group marks, and promoting the availability of such apps, constituted active use of the signs in the course of trade in its own commercial communications. The use was in relation to goods (smartwatches and similar) for which the marks were registered, and there was a likelihood of confusion and/or unfair advantage taken of Swatch's reputation. Samsung's involvement was not merely technical or passive, so it could not rely on the e-Commerce Directive Article 14 defence.

Court Disposition

Claim allowed in part; trade mark infringement established against Samsung for specified apps.

Orders

  • Declaration of infringement in respect of apps 1-18, 20-22, 26-30 as set out in the judgment.
  • Samsung's e-Commerce Directive defence rejected.