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Swatch Group today won a milestone trade mark case against Samsung in the UK.  Last year, Mrs Justice Falk held that Samsung had infringed trade marks belonging to a number of well-known Swiss watch brands of the Swatch Group including amongst others Omega, Tissot, Longines and Swatch. Today, in the Court of Appeal in London, in a case which will have a significant impact on internet trade mark law, Lord Justice Arnold, Lord Justice Lewison and Lady Justice Elisabeth Laing comprehensively rejected Samsung’s appeal.

The Appeal Court confirmed the trial judge’s ruling, that certain downloadable “watch face” apps available on Samsung’s Galaxy App store, which could be installed onto its smartwatches, infringed the trade marks of companies of the Swatch Group. The infringements included such famous trade marks of Swiss watch-making as Breguet, Blancpain, Jacquet Droz, Glashütte Original, Omega, Longines, Tissot, Hamilton, Mido, and Swatch.

The widest impact of the case is likely to come from its treatment of the “e-Commerce Directive” defences. Samsung argued that it had a defence to a claim for damages, because the watch face apps had been supplied by third party developers through its online Galaxy App store.  At trial, the judge rejected Samsung’s defence of “mere hosting” (Art. 14 of the E-Commerce Directive) on the basis of the knowledge test in Article 14(1), saying: “the test is one of whether a diligent economic operator should have identified the illegality by reference to facts or circumstances of which it is (actually) aware. The existence of notice and take-down procedures does not itself provide a defence.” The Court of Appeal went on to hold that Samsung could not rely on Art. 14 at all, because: “Samsung’s acts of use of the disputed signs were active, and gave it knowledge of and control over that content. They were not merely technical, automatic and passive with no knowledge or control. Thus they were not within Article 14(1).”

Mireille Koenig, the Swatch Group co-Chief Legal Officer (CLO) and member of the Extended Group Management Board, said: “Swatch Group is pleased with the judgment, which looked at a new form of trade mark infringement in the digital age, and the liability of online providers such as Samsung’s Galaxy Store. The Court reached the right result, protecting the exclusivity and value of our iconic watch brands.”