This Kat mentioned that the Court of Appeal decision was coming up in the continuing UK round of the Apple v Samsung litigation regarding registered designs for tablet computers, and then the blogmeister announced the result with astonishing speed on the Class 99 blog on the day of its release. Interested readers will doubtless have picked up the story there, but this Kat would like to add his reflections on the decision.
The issue was the interpretation of Article 91(1) of Council Regulation 6/2002 on the Community Design:
A Community design court hearing an action referred to in Article 81, other than an action for a declaration of non-infringement, shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties, or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the Community design is already in issue before another Community design court on account of a counterclaim or, in the case of a registered Community design, where an application for a declaration of invalidity has already been filed at the Office.and whether, despite the clear wording “other than an action for a declaration of non-infringement” this meant that Samsung’s action for a declaration of non-infringement and Apple’s counterclaim for infringement should be stayed pending the outcome of the action at OHIM for a declaration of invalidity.
|This Kat is also declining to stay|
Kitchen LJ granted permission, and in the Court of Appeal sat the Master of the Rolls, and Lords Justice Lloyd and Moore-Bick on 21 May 2012 to hear Apple's appeal.
Unusually, Apple changed both its barrister team and the basis on which it sought a stay of the proceedings. Therefore, although Lloyd LJ, giving the judgement of the court, accepted that the first instance decision was correct (“[Mann J] was right to do so for the reasons he gave”), he went on to consider the new arguments put forward by Apple. These were in essence that the counterclaim for infringement required the stay even if the original action did not, and that the stay should then apply to both the counterclaim and the original claim (the “proceedings”). Apple’s arguments relied on a difference in meaning between the words 'hearing', 'action' and 'proceedings' in the English language version of the Regulation. Moreover, Apple maintained that Samsung would have to drop the OHIM invalidity proceedings if it wanted to proceed with the declaration of non-infringement in England.
Presumably, once this argument had been raised, which had some potential force, it could not simply be ignored by the Court of Appeal, although it seems to this Kat rather surprising that a party can change the whole basis of its forensic position on appeal.
The disposal of the case was rather neat. The full trial was due, according to the original directions of Mann J, to come up on 18 June 2012. Lloyd LJ therefore ordered that the trial go ahead as scheduled (this Kat will be eagerly looking out for this). He dismissed the appeal so far as the stay of the declaration of non-infringement was concerned, while he remitted to the first instance whether there were “special grounds” to not stay the counterclaim. This was to be considered as part of the main trial:
Since it will not affect the issues at the trial itself, which are the same on the claim as on the counterclaim, it does not seem to us that to require the judge to decide this additional issue should cause difficulties at the trial, other than by requiring what we hope will be a modest amount of time to be devoted to this aspect of the argument.So we can hope for a judgement on substantive matters (not alas relating to validity, which is not in issue, but in relation to [non]-infringement at least) in the near future.