WIPO Lex

This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.

Session 2: Emerging Issues in Industrial Designs

The Hague Court of Appeal, Netherlands [2020]: Digital Revolution B.V. and Maxperian NL B.V. v Samsung Electronics Co., Ltd., Case No. 200.216.620/01

Date of judgment: April 21, 2020
Issuing authority: The Hague Court of Appeal
Level of the issuing authority: Appellate Instance
Type of procedure: Judicial (Civin( �br> Subject matter: Industrial Designs
Plaintiff: Digital Revolution B.V. and Maxperian NL B.V.
Defendant: Samsung Electronics Co., Ltd.
Keywords: Community design, Technical function, Slavish imitation

Basic facts: Samsung, a global electronics company, produced and sold various types of laser printers using interchangeable toner cartridges. Samsung’s products included different series of printers, grouped as the CLP printers, the ML and SCX printers, as well as toner cartridges suitable for the CLP, ML and SCX printers.

Samsung has held several Community designs relating to toner cartridges for laser printers, including Community design 001200687 (CDR 687) registered on March 8, 2010 for ‘Developing devices for printers’, and Community design 000853551 (CDR 551), registered on January 3, 2008 for ‘Cartridges’. The registration of CDR 687 contains the following figure:

The registration of CDR 551 contains the below illustration:

Maxperian and Digital Revolution (DR) both operate web shops offering and selling printers and toner cartridges in the Netherlands and Belgium. Maxperian does so via the website linked to the domain names sneltoner.nl, sneltoner.be and sneltoner.com. The DR website is linked to the domain names 123inkt.nl, 123inkt.be and 123inkt.com. Maxperian and DR trade toner cartridges that are compatible with Samsung’s CLP, ML and/or SCX printers under their own brand, using the type numbers of the Samsung cartridges.

At first instance, Samsung alleged that Maxperian infringed CDR 687 with the Q-Nomic MLT-D1042S toner black, and CDR 551 with the Q-Nomic CLP-[α] 660B toner [ß] high capacity. In their counterclaim, DR and Maxperian challenged the validity of CDR 687 and CDR 551, arguing, inter alia, that their exterior features are determined solely by their technical function. According to Samsung, the exterior features that are not exclusively technical and give the model a distinctive and individual character are, for GM 687, the ridges and the handle (notch) and, for CDR 551, the square grids which are located particularly on the bottom and side walls, and the protrusions (handles) on either side, which are sloping and resemble a duck’s beak.

The District Court found there to be infringement of the invoked Community design rights, dismissing the counterclaims for annulment or nullification of the design rights.

On appeal, DR and Maxperian challenged the finding of infringement of the Community design rights and the rejection of the counterclaims for the annulment/invalidity of the design rights. Samsung contested the grounds for appeal. In the alternative, in the event that the Court of Appeal did not find infringement, Samsung invoked the doctrine of slavish imitation.

Held: The Hague Court of Appeal upheld the appeal against the findings of infringement of CDR 687 and CDR 551, and set aside the judgment of the District Court to this extent. The Court of Appeal also overturned the District Court’s ruling on DR and Maxperian’s counterclaim, and Community designs CDR 687 and CDR 551 were declared invalid. The Court of Appeal further held that Samsung’s reliance on slavish imitation must fail.

Relevant holdings in relation to emerging issues in industrial designs: The Court of Appeal agreed with the assessment of DR and Maxperian that the exterior features of CDR 687 and CDR 551 are technically determined.

In its analysis, the Court of Appeal found that the ribs and grids in CDR 687 and CDR 551 have the effect of, on the one hand, saving material and, on the other hand, maintaining the necessary structural rigidity. The Court of Appeal considered that Samsung’s argument that the implementation of ribs or grids is not necessary to achieve structural rigidness, as demonstrated by the fact that there are cartridges (the majority even) without ribs or grids and that it would be better for structural rigidness not to apply ribs or grids, ignored that the combined effect is not merely to improve structural rigidness, but to save material while maintaining structural rigidness.

The Court of Appeal further held that a technical effect must be attributed to the duck-billed projections in CDR 551 and the handle of CDR 687, as both are designed to provide a good grip to facilitate inserting the cartridge into the printer (as well as removing the cartridge from the printer, in the case of the handle of CDR 687).

After finding that the exterior features that, according to Samsung, give CDR 687 and CDR 551 their individual characters are technically determined, the Court of Appeal applied the holding of the Court of Justice of the European Union (CJEU) in DOCERAM GmbH v CeramTec GmbH, to consider whether the exterior features of CDR 687 and CDR 551 referred to above were determined on an exclusively technical basis, or whether other factors played a role in their design.

The Court of Appeal began its analysis with the assumption that, for products such as the one in question, it is generally not obvious that factors other than the technical function to be fulfilled play a role in the creation of external features. The Court of Appeal considered Samsung’s assertion that the desire to give the cartridge an individual, recognizable, original and/or aesthetic character to enable distinction and recognition of the design played a role in the creation of the exterior features to be insufficient and too implausible to deviate from the aforementioned assumption.

Therefore, the Court of Appeal held that it must be assumed that all exterior features of CDR 687 and CDR 551 are exclusively technically determined, so that they are excluded from protection under Community design law (EU Council Regulation (EC) No. 6/2002). As such, contrary to the judgment of the District Court, DR and Maxperian’s counterclaim for a declaration of invalidity of CDR 687 and CDR 551 was granted.

Regarding Samsung’s invocation of the doctrine of slavish imitation, the Court of Appeal held that because Samsung, on whom the burden of proof rests, failed to sufficiently substantiate that cartridges with the physical appearance of CDR 687 and CDR 551 have their own place on the market, the slavish imitation claim must fail.

The Supreme Court of the Netherlands upheld the decision of the Court of Appeal.

Relevant legislation:
Article 8(1) of European Union Council Regulation (EC) No. 6/2002