UK App Store Operators May Be Held Liable For Trademark Infringement

The High Court of England and Wales recently held Samsung liable for trademark infringement for watch faces sold on the Samsung Galaxy app store (“Samsung’s Store”) and infringement of the trademark rights of Swatch Group. The judgement provides useful guidance on the liability of intermediaries, particularly regarding app store operators.

Background

Digital watch faces can be downloaded by app store and uploaded to smart watch. In this case, the watch face apps were only available on Samsung’s store and were only available for Samsung smartwatches. The Samsung Store is operated by Samsung and acts as an online platform where Samsung and third-party app developers can deliver apps to consumers.

Swatch claimed that 23 of its trademarks were infringed by 30 watch face apps available on the Samsung Store between October 2015 and February 2019. Despite the fact that these apps were designed and offered for sale by third parties (this i.e. app developers), Swatch argued that Samsung was still involved and in control of the sales process. In its defense, Samsung argued that there was no case of trademark infringement because Samsung did not use the trademarks but simply provided a platform for developers and therefore it does not should not be held liable based on the “safe harbor provision” (i.e., Article 14 of the E-Commerce Directive).

decision

The court decided that Samsung infringed the Swatch trademarks and took advantage of their reputation because there was active conduct and control by Samsung with respect to face watch apps and their availability on the Samsung Store. In coming to this conclusion, the court considered the following circumstances:

  • Samsung decided to design only a limited number of apps and encouraged third-party developers to create and offer watch face apps for sale on the Samsung Store. Samsung also offered support to app developers to create the apps and actively advertised the apps.

  • Samsung has licensing agreements with app developers in place as it is a requirement for developers to use Samsung materials and download apps from the Samsung Store.

  • The content review process allows Samsung to only allow apps deemed appropriate and compliant with their technical requirements into the Samsung Store. Thus, Samsung’s role has gone beyond providing a simple technical tool and Samsung has a clear commercial interest in relation to the applications sold on the Samsung Store.

  • Watch face apps act as an interface to the watch and a first interaction with the product. Thus, they denote the origin of the watch itself and may confuse the market or suggest that a link between Samsung and Swatch existed.

Safe Harbor Layout

Samsung could not rely on the safe harbor provision, according to which an intermediary cannot be held responsible for infringing content on its platform if it has no actual knowledge of the illegal content and, s obtains this knowledge, acts promptly to remove or disable access to content.

In fact, by reviewing all the apps as part of the content review process, Samsung had become aware of facts such as the name of the app, the look of the watch face, and the branding on the watch face. show. Therefore, Samsung, as a diligent economic operator, should have identified and avoided the trademark infringement.

Conclusion

This case provides useful guidance on the liability of online intermediaries for app store operators and indicates that a distinction should be made between app store operators and online marketplaces, as app store operators app stores generally take an active role with respect to the content promoted and sold on the app store. , including pre-release review, and should therefore be held liable for trademark infringement related to apps sold on their stores.

Therefore, app store operators should be aware that automated reviews, notice and takedown processes, and a specific commitment not to infringe intellectual property rights may not be sufficient to minimize the risk of abuse. ‘offense. A thorough review of the intellectual property of content developed by third parties should also be undertaken to ensure that no third party rights are infringed before the content is made available to consumers.

Sophie Verstraeten also contributed to this article.

Lance B. Holton