Two preliminary procedures pitting Apple Inc. ("Apple") against Samsung Electronics Co. Ltd ("Samsung Korea") and its affiliates illustrate interesting aspects of cross-border injunctions in the EU. Both procedures, one before the district court of Düsseldorf (Landesgericht Düsseldorf -the "German Court") and the other before the court of the Hague (Rechtbank ‘s Gravenhage - the "Dutch Court"), resulted in sharply contrasting decisions.
Before the German Court, Apple had initiated ex parte proceedings against Samsung Korea and Samsung's German affiliate to block the launch of a specific tablet computer (the Samsung Galaxy Tab 10.1) in the EU. Apple claimed that the tablet infringed its registered Community design rights. For this purpose, Apple requested a preliminary injunction against the marketing of the product in any EU Member State, except for The Netherlands.
On 9 August 2011 it was reported that the German Court had granted an EU-wide preliminary injunction against Samsung (excluding The Netherlands). The German Court apparently held that the Galaxy Tab 10.1 infringes Apple's registered Community design 000181607-0001. As a result, the German Court imposed an EU-wide injunction upon Samsung and its German affiliate.
However, after hearing Samsung's arguments during a post-injunction hearing, the German Court limited the scope of its injunction to Germany on procedural grounds. Indeed, the German court held that it did not have jurisdiction over Samsung Korea on the basis of Article 82 of Regulation 6/2002 of 12 December 2001 on Community designs (the "Community Design Regulation"). Still, Samsung's German affiliate continues to be enjoined from selling the Galaxy Tab 10.1 in the EU.
The injunction requested before the German Court excluded the Dutch territory because Apple had already initiated a separate preliminary procedure in The Netherlands against Samsung to prohibit the sale of a range of Samsung tablets and smartphones. The Dutch procedure was based on patents, design rights and copyright.
In contrast to the German Court, the Dutch Court found that Samsung's products did not infringe Apple's registered designs. The Dutch Court also held that Apple could not rely on copyright protection for its products. On the other hand, it found that three Samsung smartphones violated Apple's patent EP 2 059 868 for a "portable electronic device for photo management" ("EP ‘868"). Interestingly, the Dutch Court - which had referred a preliminary question on this issue to the EU Court of Justice ("ECJ") on 29 December 2010 and still awaits a response from the ECJ - held that it has cross-border jurisdiction in summary proceedings on preliminary injunctions unless and until the ECJ would decide otherwise. It should be noted that such a cross-border injunction is not possible in a procedure on the merits in which the validity of the patent is contested. In contrast, the case at hand concerns summary proceedings. Therefore, the Dutch Court ruled that Samsung did not only infringe the Dutch part of EP ‘868, but the defendants established in The Netherlands also infringed foreign parts of the same European patent. Despite all this, the Dutch Court granted Samsung a grace period of 7 weeks to amend its software in order to avoid the infringement.
These cases show that cross-border preliminary injunctions are possible based on various intellectual property rights. At the same time, they also highlight the importance of choosing carefully the forum, the legal basis and the parties against whom the injunction is sought.
