Key Facts
- •Swatch, a group of watchmakers, sued Samsung for trade mark infringement due to third-party watch face apps on Samsung's Galaxy App store (SGA store) that resembled Swatch's trade marks.
- •The apps were developed by third parties, but Swatch argued Samsung was primarily liable as it controlled the app approval process.
- •Samsung's smartwatches were marketed for their watch-like qualities, and the SGA store was a key part of Samsung's business model.
- •Samsung had a content review process, but it was argued that this process was insufficient to prevent trade mark infringement.
- •Samsung argued it had a defence under Article 14(1) of the e-Commerce Directive, claiming it lacked actual knowledge of the infringements and acted expeditiously to remove them upon notification.
Legal Principles
A party only 'uses' a sign for trade mark infringement purposes if it uses that sign 'in its own commercial communication'.
CJEU case law (Google France, L'Oréal, TOP Logistics, Coty, Louboutin)
Use of a sign 'in relation to' goods or services means use 'for the purpose of distinguishing' the goods or services.
CJEU case law (Bayerische Motorenwerke, Anheuser-Busch, Céline)
Post-sale context can be relevant when considering trade mark issues, including use.
EU and domestic case law (Arsenal Football Club, Anheuser-Busch, Ruiz-Picasso, Datacard, Thomas Pink, London Taxi Corporation)
Article 14(1) of the e-Commerce Directive provides an exemption from liability for information society service providers for information stored at the request of a recipient, provided they lack actual knowledge of illegal activity or act expeditiously to remove it upon obtaining such knowledge.
Article 14(1) of the e-Commerce Directive
For Article 14(1) to apply, the service provider's role must be 'merely technical, automatic and passive', with no knowledge of or control over the information stored.
CJEU case law (Google France, L'Oréal, Peterson)
A 'diligent economic operator' standard is applied in assessing whether a service provider was aware of facts or circumstances from which illegal activity was apparent.
CJEU case law (L'Oréal, Peterson)
Outcomes
The Court of Appeal dismissed Samsung's appeal.
The court found that Samsung's actions went beyond merely providing a technical platform for apps. Samsung's active involvement in app review, marketing, and the overall presentation of apps in the SGA store, coupled with the watch-like marketing of its smartwatches, constituted 'use' of the infringing signs in its own commercial communications. The court also rejected Samsung’s defence under Article 14(1) of the e-Commerce Directive, finding that Samsung's role was not 'merely technical, automatic and passive'.