Available online at www.sciencedirect.com
Procedia Economics and Finance 3 (2012) 908 – 913
Emerging Markets Queries in Finance and Business
IP Protection and International Trade
Mihaela Daciana Bolosa,*
a
-
, Nicolae Iorga street, no. 1, 540 080, Romania
Abstract
The article explores how intellectual property IP manifests in international trade. The Trade Related Aspects of
Intellectual Property TRIPS Agreement was adopted and signed by the WTO member states in need to avoid
that intellectual property would become a barrier in international trade. But nowadays we can see IP battles that
may affect the way international trade is developed. Such is the case of Samsung vs. Apple which is sprinkled
with patents, trademarks or industrial designs case files and also with banning products on one or more
markets. The paper studies the way this national litigations interfere with international trade, analyzing some of
court decisions and their impact in a product presence on a certain market.
© 2012 The©
Authors.
by by
Elsevier
Ltd. Ltd. Selection and peer-review under responsibility of the
2012 Published
Published
Elsevier
Selection and
peer review
under responsibility
Emerging
Markets
Queries
in Finance and Business local organization.
Markets
Queries
in Finance of
and
Business
local
organization
Emerging
Keywords: intellectual property, international trade, national and international litigations, Samsung, Apple
1. Introduction
The World Trade Organization WTO is the international establishment that focuses on international trade
matters, international rules in this fields and international disputes. Regarding the aspects of IP in international
trade the member states adopted and the organization implements the TRIPS Agreement. In the preamble it is
desiring to reduce distortions and impediments to international trade, and taking into account the
* Corresponding author Tel.: +40744157551
E-mail address: bolos.mihaela@gmail.com.
2212-6716 © 2012 The Authors. Published by Elsevier Ltd.
Selection and peer review under responsibility of Emerging Markets Queries in Finance and Business local organization.
doi:10.1016/S2212-5671(12)00249-3
Mihaela Daciana Bolos / Procedia Economics and Finance 3 (2012) 908 – 913
need to promote effective and adequate protection of intellectual property rights, and to ensure that measures
and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade
WTO, TRIPS Agreement, 1994. So this agreement has as purpose the harmonization of IP rules with trade
rules and practices in such a manner that the IP rights remain a property protected around the world but should
not become a barrier in international trade. In the context of globalization international trade becomes an
important aspect of the international economy because well-known trademarks and products but also other less
known can be found in markets all over the word or on sale on internet. In this context excluding one product
geographical indications especially in the case of the special protection system of the UE.
The TRIPS Agreement has another dimension of protection which addresses the owners of IP rights against
infringements such as counterfeiting or other forms of IP infringement. Because infringements are frequent in
prevent the entry
into the channels of commerce in their jurisdiction of imported goods that involve the infringement of an
WTO, TRIPS Agreement, 1994.
intellectual property right
We will analyze the conflicts between Apple and Samsung regarding IP rights protection and we will follow
haw courts implement the provisions regarding restrictions to imports regarding the products in this cases. We
will conduct this analyze in the economic context of each manufacturer meaning turnover trademark value and
other indicators that may give an explanation to the financial stake in these cases.
2. Apple vs. Samsung
The legal battle between Apple and Samsung has as object patents, trademarks and industrial designs,
registered internationally, regionally or nationally. The battle takes place in front of national and regional
courts and the object is clearly the infringement of IP rights.
Interesting in this battle strategy is that we have attacks and counter attacks by both parts in many
jurisdictions such as USA, Germany, Netherlands, Australia, European Union Community Design and Patent
Courts, concerning three aspects of IP, namely trademarks, patents and industrial designs.
2.1 Patent and design infringement claims
The patents and industrial designs are clearly some of the main reasons for litigation in this case, because
both parties accused the other of patent right infringement and design rights infringement. The quarrel started
in 2011 when Apple filed a complaint to the US District Court for the Northern District of California Case No.
11-CV-1846 Apple vs. Samsung, 2012 claiming that Samsung infringed some of its utility and designs patents
webpage Apple Application for summons,
registered in the US. In the complaint, file available on
2011, Apple asks the cort to analise and decide over the infridgment of several utility partents and design
patents, that Samsung elegedly used widouth right.
After a description of the innovative character associated with Apple Company, the lawsuit scope is
presented. The new products of Apple, iPhone, iPod touch and iPad, are protected trough utility patents and
design patents which gives Apple the sole right to use these innovations. The utility patents cover functionality
aspects such as Multi-touch user interface, individual features such as arrangement of text messages on the
ement of the buttons and other features
that can be found on the Apple products Apple Application for summons, 2011. The three design patents
named by Apple refer to ornamental features that make the products unique Apple Application for summons,
2011.
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Mihaela Daciana Bolos / Procedia Economics and Finance 3 (2012) 908 – 913
The three designs registration made in USA regarding the design of the iPhone, iPod touch and iPad are
completed by trade dress registration regarding the overall image of the products. Samsung attacked claiming
Apple infringement of its own patents and the non innovative character of
The parties augmented their position and a final decision is still expected. But a request for a preliminary
injunction needed to stop the IP rights infringement was requested by Apple. In 29.06.2012 the Court grants
motion for a preliminary injunction banning the sales on Galaxy Tab 10.1 Apple vs. Samsung, Order
Granting Preliminary Injunction, 2012. The trial starts on July 30 2012, according to the hearing schedule
United States District Court Northern District Of California, 2012.
Another application for summons was made by Samsung against Apple regarding the infringement of 3G
patents. The lawsuit develops in front of the Federal Court of Australia, case no. NSD1243/2011 Federal Court
of Australia, 2012. In the media the case judge declaration was cited who classifies the litigation as
Schneider, 2012.
In the European Union cases are pending or settled in front of Netherlands, German or England courts and
in front of the regional courts of the European Union. The decision in Netherlands was different from the
German one. The Dutch court gave a partial decision regarding one 3G patent ordering Apple to pay damages
to Samsung for patent infringement BBC, 2012. In the German courts the situation is quite different because a
partial ban on Samsung Tab 7.7 because it infringes Apples registered design. This decision is different from a
British early decision regarding some Registered Community Designs Mallinson, Marshall, & Murphy, 2012.
The quarrel regarding Registered Community designs reached also the European courts. The cases Case No:
HC 11 C 03050, Case No: HC11C03010 and the appeal to the last decision Case No: A3/2012/0866 were
settled by the European Patent Court.
The case no: HC11C03010 regards the request for judgment made by Samsung against Apple regarding the
Registered Community Design no. 181607-0001 registered by Apple. In question is the Samsung tablet
computer named Galaxy who is allegedly infringing Apples rights. The judge Justice Man acknowledges the
rather high number of disputes between the two companies in many jurisdictions regarding the IP rights in case.
The judge mentions the conflicting decisions of the Netherlands and German courts and also the fact that Apple
is seeking injunctive relief on a pan-European basis Samsung vs Apple, EU Court, 2012.
Practically if we analyze the previous cases and other that are still pending in front of courts around the world
Apple strategy is to gradually band the Samsung products that infringe its IP rights. In this specific case
declarations of non-infringement against Apple and also seek an injunction
restraining Apple from making threats to sue for infringement Samsung vs Apple, EU Court, 2012. Trough
this case Samsung seeks an expedition because it claims that the uncertainty regarding whether its product
rights causes financial losses. The judge decided in favor of Samsung setting
hearings dates. Apple appealed this decision: Case No: A3/2012/0866. Court of Appeal Civil Division on
appeal from the High Court of Justice Chancery Division Patents Court Mr Justice Mann, 2012 EWHC 889 Ch,
2012.
In the case no. HC 11 C 03050/2012 EWHC 1882 Pat, the court analyses if the Registered Community
Design no. 181607-0001 owned by Apple, mentioned above, is being infringed by Samsung
. The
decision relied on aspects of similarity of the products in question and similarities with other products such as
Cannon
So the conclusion is that
Samsung vs Apple, EU Court, 2012.
The connection with other similar products is extremely relevant due to the fact that lately Apple was sued
by other IP owners for problems related to IP rights aspects.
Mihaela Daciana Bolos / Procedia Economics and Finance 3 (2012) 908 – 913
Samsung
Front
Rear
Fig. 1. Design in debate in front of the UE courts (photo source: case no. HC 11 C 03050/[2012] EWHC 1882 (Pat) ).
Fig. 2 Design similar in some aspects to the one in debate in front of the UE courts (photo source: case no. HC 11 C 03050/[2012] EWHC
1882 (Pat) ).
The problems for Apple are far from a solution as further litigations are expected in the future. For example
Kodak sued Apple because it delays the payment of royalties for the Kodak patent it uses, fact that interfere
whit the economic situation of Kodak who is subject of a bankruptcy procedure in front of US Courts Reuters,
2012.
2.2 Trademark infringement claims
Apple also claims trademark infringement in the complaint addressed to the US courts. The trademarks in
question refer to icons designed and registered specially for the iPhone, iPod touch and iPad. The claim regards
the similarity of the Samsung icons with its own. Some examples are presented below:
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Mihaela Daciana Bolos / Procedia Economics and Finance 3 (2012) 908 – 913
Apple
Fig.
US Courts, 2011, http://images.apple.com/pr/pdf/110415samsungcomplaint.pdf )
Samsung
of
3. Conclusions
From the data presented above a few things can be concluded. First the legal battle between the two
companies presents interesting situations and interpretations in the field of IP rights in the IT business. The
battle is not a singular one as the data shows because other players are entering this market and they will face
similar lawsuits or they may sue the two actors of the present cases.
Secondly, the fact that Apple and Samsung both won lawsuits against one and other proves that both
companies tend to use IP rights in similar manner, infringing competitors rights at a certain point in time. This
fact is maybe motivated by the value of this market and by the high number of sales that both Samsung and
Apple are enjoying.
Thirdly, aspects of the interaction of IP rights and international trade are obvious because the many lawsuits
in many jurisdictions and the fact that requests to ban the products infringing IP rights on those markets proves
exactly the fact that the scope of the actions is related to trading and selling products worldwide.
The strategy of implementing IP rights in such disputes is not singular, the case between Anheuser-Busch
Inc. U.S. producer, who owns the trademark American Bud, and Budjovicky Budwar, narodny podonick
established in Eeske Budjovice, the Czech Republic who owns the geographical indications for the beer. The
dispute developed in jurisdictions all over the world reaching a number of more than 100 legal disputes Bolos,
2011. The scope was to impose the geographical indication right over the trademark right and vice versa in as
many jurisdictions as possible banning the access of the other party on that market.
The Apple - Samsung dispute is similar and will probably mean more legal disputes in as many jurisdictions
as possible. This implies national regional and international courts. The national and regional level was reached
because we have cases in US, Germany, Australia, etc, and European Union. It is to be expected a WIPO
dispute regarding IP rights.
This situation as well as the previous one regarding the beer proves that improvements must be made in the
system of dispute resolution regarding IP rights, because a big loss of time and money is generated by difficult
cases resolution around the world. But one must also have in mind that with a single decision applicable
worldwide little room for
conflicting decisions.
Mihaela Daciana Bolos / Procedia Economics and Finance 3 (2012) 908 – 913
Acknowledgements
This paper is a result of the project `Transnational Network for Integrated Management of Postdoctoral
Research in Communicating Sciences. Institutional building (postdoctoral school) and fellowships program
CommScie" - POSDRU/89/1.5/S/63663, financed under the Sectoral Operational Program Human Resources
Development 2007-2013.
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