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Apple v. Samsung and the importance of design registration

The term “patent wars” is often used to describe the intellectual property battles between companies but another form of IP protection that usually flies under the radar, namely design registration, can be an effective weapon of choice.  Design registrations can be very advantageous in certain situations and can form a key part of your IP protection strategy.Apple’s ongoing legal battles with Samsung demonstrate the importance of design registrations.2012 Sept 18 DHT_Apple v Samsung_Importance of Design Registration

Last year, Apple began filing IP infringement lawsuits against Samsung worldwide.  Apple’s allegations include patent infringement and design registration infringement.  Samsung countersued with its own allegations of patent infringement.  In the U.S., Apple won an early, temporary sales bans against certain Samsung products based on Apple’s design registrations, and most recently Apple won at the trial level with a billion dollar infringement award against Samsung based to a significant degree on Apple’s design registrations.  Apple’s design claims have also resulted in a temporary sales ban in Germany.  The sales bans caused major business disruptions for Samsung, preventing it from releasing certain products and forcing it to remove certain products during at least one major consumer electronics tradeshow.  Following the US trial decision, Apple’s market capitalization jumped by $11 billion whereas Samsung’s market capitalization suffered a loss of a similar amount.  While the US decision is expected to be appealed by Samsung and many of the other lawsuits around the world have not been concluded, Apple so far has clearly had the upper hand, and in no small part thanks to its design registrations.

How do design registrations differ from patents?  Design registrations only protect the ornamental appearance of product.  Patents, on the other hand, protect the functionality of a product and therefore offer a greater scope of protection.  The scope of protection of design registrations is defined by the drawings filed with the application for the design registration.  A design registration is infringed by products having an identical design or a design that is substantially similar in the eyes of an ordinary observer.  Whether a potentially infringing design is sufficiently similar is ultimately up to a judge or jury.

From a practical point of view, design registrations are faster and less expensive to obtain.  Straightforward design applications typically issue to registration within one year after filing, compared to patent applications which typically take 3 or more years after filing to issuance as a patent.  Design registrations can be obtained at a fraction of the cost of patents.

How long design registrations last depends on the country.  In Canada, design registrations are known as industrial design registrations and last up to 10 years from the registration date.  In the US, design registrations are known as design patents (as distinguished from utility patents) and last up to 14 years from the registration date.  In Europe, a European Union-wide design registration, known as a Community design, lasts up to 25 years from the application filing date.

The requirements for obtaining a design registration are similar across most countries.  The basic requirements are that the design must be new, non-obvious, and ornamental.  A new design means that there are no previously existing identical designs.  A non-obvious design is a design which would not be considered obvious based on any previously existing designs or combination of designs from the point of view of a hypothetical skilled designer.  An ornamental design is a design which is not predominantly functional.  Also, design registrations are usually available only for features that are visible when the product is in use; this requirement goes hand-in-hand with the requirement that the design be ornamental rather than functional (i.e., if it can’t be seen during use then it can’t be ornamental).

Apple design registrations included claims to the icon layout and black rectangular edge-to-edge glass embodied in its iPhone, as well as the flat, rectangular, rounded corners embodied in its iPhone and iPad.  Based on these design registrations, judges in the US and Europe granted temporary sales bans against certain versions of Samsung’s tablet computers, and a US jury awarded large damages against Samsung due to infringement by its smartphones and tablets.  On the other hand, a UK judge found that Samsung’s product did not infringe Apple’s design registrations. These cases demonstrate that some subjectivity is involved with assessing sufficiency of similarity.  Interestingly, the UK judge noted that the Samsung product did “not have the same understated and extreme simplicity which is possessed by the Apple design” and was “not as cool”.

Whether the ultimate result of these legal battles weigh in Apple’s favour, Apple has no doubt accomplished some of its business goals by disrupting the release of Samsung products and by forcing Samsung to change the appearance of its products to be more clearly differentiated from Apple’s design registrations.

Design registration should be considered if you wish to protect the appearance of your product. Design registrations are relatively simple to obtain and effective against knock-offs.  If you have a product that not only has a unique function but also a unique appearance then consider applying for both patent protection and design registration protection.  If your product has several versions that look different, then multiple design filings to cover each version may be an option given their relatively low cost.  Filing an application for a design registration will provide you with “design pending” status or, in the US, “design patent pending” status, which may be useful from a marketing perspective.

It is important to ensure that your application for design registration is filed in time.  In some jurisdictions (for example, in Canada, the United States and Europe) an application for a design registration may be filed up to one year after the earliest public disclosure or sale of your product embodying the design.  In other jurisdictions, an application for design registration must be filed prior to any public disclosure or sale of your product embodying the design.  Once an application for design registration is filed in one country, corresponding applications can be filed within six months in other countries claiming the benefit of the initial filing date.


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