London: 15 December 2023.
The Court of Appeal (Lewison, Arnold, Elisabeth Laing LJJ) today issued judgment in Montres Breguet SA v Samsung Electronics Co Ltd  EWCA 1478. The Court of Appeal dismissed Samsung’s appeal against Falk J’s trial judgment holding Samsung liable for the watch faces, which took the form of downloadable apps placed on Samsung’s Galaxy Apps store by third party online sellers. The watch face apps, which recreated real Swiss watch faces in meticulous detail whilst also using the trade mark or similar dial branding, had been downloaded around 160,000 times by Galaxy watch customers.
A number of famous Swiss watch brands, including Omega, Longines, Tissot and Swatch, had joined forces in the trade mark infringement action against Samsung, overcoming Samsung’s defences at trial that the use was not by Samsung and was within the safe harbour defence of “mere hosting” under the UK regulations that implement Article 14 of the E-Commerce Directive.
Samsung appealed to the Court of Appeal, arguing that it was being unfairly penalised for putting apps through a screening process before uploading, thereby actively gaining knowledge of their content. They further argued that app stores could not function properly if the High Court’s ruling was upheld.
Dismissing the appeal, Arnold LJ, held that the use went beyond merely technical, automatic and passive so that the Article 14 defence failed. Moreover the way that the Galaxy App Store presented the apps to consumers did not adequately distinguish between apps supplied by Samsung itself and those supplied by third party sellers. In addition, the post-sale context was relevant since members of the public, viewing the face on a Samsung smartwatch worn by someone else, may regard the use as trade mark use in relation to the smartwatch.
Simon Malynicz K.C instructed by Wilmer Hale LLP, leading Geoffrey Pritchard and Daniel Selmi, acted for the successful claimants/respondents to the appeal.