Global IP Strategy Considerations In The Spotlight As Mobile Patent, Trademark Battles Rage In EuropeAugust 30th, 2011 by spyros lazaris
In the global explosion in intellectual property litigation over mobile device technology, attention has turned to disputes between Apple and Samsung over their respective mobile product lines. In their worldwide IP clash, the two companies have lawsuits pending against each other in jurisdictions around the world. The resulting international battles highlight the importance of a global intellectual property protection strategy around products expected to have significant cross-border appeal. Recent activity shows that a careful consideration of domestic and international IP laws may generate significant advantages depending on the country where enforcement is sought.
For example, Apple’s European litigation strategy seems to be focused in part on a clever plan for enforcing IP rights in the European Union based on a trademark-related Community design registration (No. 000181607-0001) it obtained in February 2010. A Community design registration is granted by the EU’s Office of Harmonization for the Internal Market, and confers rights across the whole of the European Union with a single registration. That means that a court decision, including an injunction, in one EU country regarding a violation of a design registration should apply in all EU countries. This is an inexpensive way to gain a huge advantage with one decision applying in many different markets – contrast this with patents in Europe, which must be conferred by and enforced in each individual country. Therefore, while attempts have made to unify patent grant and enforcement procedures across Europe, the Community design registration presents a much more attractive enforcement paradigm.
This has played itself out with injunctions in both the Netherlands and in Düsseldorf, Germany, both of which are new fronts recently opened in the firms’ global IP clash. The Düsseldorf lawsuit, filed by Apple on August 4, centered primarily on design registration No. 000181607-0001 and resulted in an injunction issued shortly thereafter. The injunction ordered a stop to the sale of certain tablet computers, and applied across the entire European Union. In the Netherlands, meanwhile, Apple succeeded in getting an injunction against the sale of certain mobile phones based on a separate lawsuit that sought damages for infringement of patents, copyrights, and the same community design registration.
Because a Community design registration can be obtained quickly and without much substantive validity analysis, Apple gained the upper hand in its European litigation by taking advantage of court procedures in countries that easily grant injunctions based on presumed validity. Despite the initial success achieved by Apple, however, subsequent decisions in both the Netherlands and Germany may indicate that more scrutiny will be given to whether the Community design registration can be used for such far-reaching results as an EU-wide injunction. Significantly, Samsung later succeeded in modifying the Düsseldorf injunction to apply only to tablet devices in Germany, and the court will revisit the issue in a hearing on September 9. Furthermore, the injunction in the Netherlands applies only to the possible infringement of an Apple operating system-related patent, and therefore, to sales only in the Netherlands, meaning that EU-wide sales of Samsung mobile phones are not directly prohibited. The Netherlands injunction also applies only to certain mobile phones.
Regardless of how the various injunctions are ultimately applied and how the litigation is resolved, the Apple/Samsung dispute shows the importance of considering all domestic and international IP protection possibilities. While Samsung appears to have tilted the momentum slightly back in its direction, Apple’s use of the Community design registration generated a significant initial litigation advantage and allowed it to stretch the mobile device IP war across the globe, substantially raising the stakes for competitors.