Factual and Procedural Background
This judgment follows a liability trial concerning a claim for trade mark infringement brought by a group of watchmakers (collectively referred to as "Swatch") against the Samsung Electronics group (referred to as "Samsung"). The claim relates to digital watch face applications ("apps") downloadable to Samsung smartwatches via the Samsung Galaxy App store ("SGA store"). Swatch alleges that between October 2015 and February 2019, 23 of their trade marks were infringed by 30 watch face apps made available in the SGA store, with around 160,000 downloads in the UK and EU. The apps were developed by third parties, but Swatch contends Samsung controlled the process and is liable as a primary or joint tortfeasor. Samsung denies liability, arguing it did not use the marks and relies on a defence under Article 14 of the e-Commerce Directive. The claim against Samsung’s UK subsidiary was stayed, leaving Samsung Electronics Co. Ltd as the active defendant.
Legal Issues Presented
- Whether Samsung used the trade marks in the course of trade in relation to the goods or services for which the marks are registered.
- Whether the use of the trade marks by Samsung or via the apps gave rise to infringement under Article 9(2)(a), (b), or (c) of the EU Trade Mark Regulation (and equivalent UK legislation).
- Whether Samsung is liable as a primary or joint tortfeasor for trade mark infringement by third-party app developers.
- Whether Samsung can rely on the defence under Article 14 of the e-Commerce Directive concerning liability for hosting third-party content.
- Assessment of likelihood of confusion, identity and similarity of marks and goods, and the impact on the reputation and distinctive character of the trade marks.
Arguments of the Parties
Claimants' Arguments
- Samsung is liable for trade mark infringement as it actively controlled and facilitated the availability of infringing apps in its SGA store.
- The use of trade marks on watch face apps constitutes use in relation to smartwatches or similar goods.
- There is a likelihood of confusion among average consumers, including indirect confusion relating to licensing or economic association.
- Samsung’s content review process was inadequate, allowing infringing apps to be published.
- Article 14 of the e-Commerce Directive does not apply as Samsung played an active role and had knowledge of infringement.
Defendants' Arguments
- Samsung did not "use" the trade marks in its own commercial communications; it merely provided a platform for third-party app developers.
- The apps were placed on the store by developers, and downloads were procured by customers for personal use, not by Samsung.
- The signs on apps were descriptive or decorative and did not indicate origin or connection with Swatch.
- Any infringement claims should fail as there was no use "in relation to" the goods or services covered by the trade marks.
- Samsung is protected under Article 14 of the e-Commerce Directive as a hosting provider with no actual knowledge or control over infringing content.
- The content review process and notice-and-take-down procedures demonstrate Samsung’s diligence and lack of liability.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Levi Strauss & Co v Casucci SpA (C-145/05) [2006] ETMR 71 |
Relevant date for assessment of infringement claims. |
Confirmed the infringement period between October 2015 and February 2019. |
| Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24 |
Definition of average consumer and assessment of likelihood of confusion. |
Applied for determining the perception of the average consumer regarding the signs and marks. |
| London Taxi Corporation Ltd v Frazer-Nash Research Ltd [2017] EWCA Civ 1729 |
Trade mark as a guarantee of origin and the scope of average consumer. |
Used to assess the guarantee of origin function of the marks. |
| Google France v Louis Vuitton Malletier (Joined Cases C-236/08 to C-238/08) [2010] RPC 19 |
What constitutes "use" in an online environment and Article 14 e-Commerce Directive interpretation. |
Distinguished use by service providers from use by advertisers and applied to Samsung's role. |
| L’Oréal v eBay (C-324/09) [2011] RPC 27 |
Use of trade marks on online marketplaces and scope of liability under Article 14. |
Considered extent of active role by marketplace operators, informing Samsung's liability analysis. |
| Coty Germany v Amazon Services Europe (C-567/18) [2020] ETMR 37 |
Active behaviour and control as criteria for "use" in trade mark infringement. |
Applied to determine Samsung's involvement and use of trade marks via apps. |
| Comic Enterprises v Twentieth Century Fox [2016] EWCA Civ 41 |
Assessment of likelihood of confusion and distinctiveness of marks. |
Referenced in evaluating the likelihood of confusion in this case. |
| Thomas Pink Limited v Victoria’s Secret UK Limited [2014] EWHC 2631 |
Relevance of post-sale confusion in trade mark infringement. |
Applied to consider the effect of use of trade marks on watch faces in post-sale context. |
| Sky plc & Ors v SkyKick UK Ltd & Anor [2018] EWHC 155 |
Exposure to and reliance on trade marks by average consumer. |
Used to support conclusions on consumer perception of the signs. |
| Liverpool Gin v Sazerac [2021] EWCA Civ 1207 |
Principles for assessing likelihood of confusion including direct and indirect confusion. |
Guided the court’s approach to confusion between marks and signs. |
| Intel v CPM (Case C-252/07) [2009] RPC 15 |
Establishing a "link" between sign and trade mark for reputation claims. |
Applied in assessing link and injury under Article 9(2)(c). |
| Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] EWHC 110 |
Requirement for evidence of injury or serious risk of injury to trade mark reputation. |
Referenced in evaluating evidence of injury to Swatch’s marks. |
| Enterprise Holdings Inc v Europcar Group UK Ltd [2015] EWHC 17 |
Permissibility of drawing inferences from facts in trade mark cases. |
Supported the court’s inferences on injury and likelihood of confusion. |
| Easygroup Limited v Beauty Perfectionists Limited [2021] EWHC 3385 |
Effect of Brexit on trade mark registration and "cloning" of EU marks into UK equivalents. |
Confirmed equivalence of EU and UK trade marks for this case. |
| Compass Publishing v Compass Logistics [2004] RPC 41 |
Test for identity of marks. |
Applied to assess identity or similarity of marks and signs on apps. |
| LTJ Diffusion SA v Sadas Vertbaudet SA (Case C-291/00) [2003] ETMR 83 |
Strict approach to identity of marks. |
Used to determine when differences between marks prevent identity. |
| Reed Executive Plc v Reed Business Information Ltd [2004] RPC 40 |
Significance of additions or deletions in marks for identity. |
Informed the court’s approach to composite marks. |
| JW Spear v Zynga [2015] FSR 19 |
Assessment of phonetic, visual and conceptual similarity. |
Guided similarity analysis between marks and signs. |
| Boston Scientific Ltd v OHIM (Case T-325/06) EU:T:2008:338 |
Definition of complementarity of goods in trade mark law. |
Applied to determine similarity between apps and smartwatches. |
| Rossi v OHMI-Sissi Rossi (Case T-169/03) |
Limits of aesthetic complementarity to establish similarity. |
Considered in assessing similarity between watches and apps. |
| General Motors Corp v Yplon SA (Case C-375/97) [1999] ECR I-5421 |
Definition of reputation for trade mark protection. |
Applied to assess Swatch’s marks’ reputation. |
| WOLF HEAD (C-383/12) |
Requirement for evidence or serious risk of injury to trade mark. |
Guided the court’s approach to injury assessment. |
| Datacard Corporation v Eagle Technologies [2011] RPC 17 |
Use "in relation to" and post-sale confusion. |
Applied in determining use of signs in relation to goods and services. |
| Arsenal v Reed [2003] EWCA Civ 696 |
Relevance of post-sale confusion. |
Referenced for post-sale confusion analysis. |
| Peterson v Google (Cases C-682/18, C-683/18) ECLI:EU:C:2021:503 |
Interpretation of Article 14 of the e-Commerce Directive on hosting liability. |
Considered in assessing Samsung’s knowledge and control over infringing apps. |
| Bundesverband der Verbraucherzentralen und Verbraucherverbände (Case C-298/07) |
Interpretation of e-Commerce Directive in context of information society services. |
Supported the court’s approach to Article 14 and its limits. |
Court's Reasoning and Analysis
The court undertook a detailed examination of the facts and legal principles applicable to trade mark infringement under the EU Trade Mark Regulation and UK Trade Marks Act 1994. It considered the nature of Samsung’s smartwatches and the SGA store, noting Samsung’s marketing of its devices as “truly watch-like” and the role of watch face apps as integral to the smartwatch’s design and function.
The court rejected Samsung’s argument that it did not “use” the trade marks, finding that Samsung’s active involvement in hosting, reviewing, promoting, and controlling the availability of watch face apps in its official store amounted to use in the course of trade. The symbiotic commercial relationship between Samsung and third-party app developers, Samsung’s provision of development tools and marketing, and the curated environment of the SGA store supported this conclusion.
On the identity and similarity of marks and goods, the court found that while the apps themselves are not identical goods to smartwatches, they are similar goods due to their complementarity and essential relationship. Smartwatches were found to be a subset of watches, establishing identity or similarity with the goods covered by the trade marks.
The court analyzed “use in relation to” the goods, concluding that the use of trade marks in app names and previews relates to the apps themselves, but the Dial Branding on watch faces (the placement of trade marks on the watch face) constitutes use in relation to smartwatches or similar goods. The Dial Branding was intended and perceived as indicating the origin of the watch rather than merely the app.
The court rejected Samsung’s contention that the use was purely descriptive, holding that the trade marks functioned as badges of origin and that consumers would perceive the signs as branding rather than mere decoration.
Regarding likelihood of confusion, the court applied established principles, including the perception of the average consumer and the context of use. It found a likelihood of confusion both direct and indirect, including the possibility that consumers would believe in a licensing or economic association between Swatch and Samsung.
On the issue of injury under Article 9(2)(c), the court accepted that the use of the trade marks on watch face apps was capable of damaging the distinctive character and reputation of the marks and of conferring an unfair advantage on Samsung. The evidence supported a reputation for the marks and a link between the signs and the marks. The court found injury in respect of certain apps with significant download numbers, while others with fewer downloads did not justify a finding of injury.
The court did not need to decide on joint tortfeasorship with app developers due to its findings on Samsung’s liability.
Turning to the defence under Article 14 of the e-Commerce Directive, the court emphasized that the protection applies only to providers whose activities are limited to the technical, automatic, and passive storage of information without knowledge or control. Samsung’s active content review, marketing, and control of app availability meant it did not qualify for the exemption. The court found that Samsung had knowledge or ought to have had knowledge of the infringing content through its review processes and that the notice-and-take-down procedure did not suffice as a defence.
The court noted improvements Samsung had made to its review process but found the earlier procedures inadequate. It emphasized that a diligent operator would have identified the infringement and taken appropriate steps.
Holding and Implications
The court held that Samsung infringed the trade marks of the Claimants under Articles 9(2)(a), (b), and (c) of the EU Trade Mark Regulation (and equivalent UK legislation) in respect of the specified watch face apps. The findings of infringement applied particularly to the use of trade marks as Dial Branding on watch faces, which constitutes use in relation to smartwatches or similar goods.
Samsung’s defence under Article 14 of the e-Commerce Directive was rejected as it did not qualify for the safe harbour protection due to its active role and knowledge of the infringing apps.
The direct effect of this decision is to establish Samsung’s liability for trade mark infringement in relation to the apps identified. The court made no new precedent beyond applying existing principles to the facts before it. The decision underscores the responsibilities of platform operators who actively manage and promote third-party content and clarifies the limits of the e-Commerce Directive’s safe harbour.