Apple v. Samsung

In January 2007 just before the iPhone was introduced, Apple patented 4 designs for the shape of the iPhone. These were followed by color design patents of 193 screen shots depicting various iPhone graphical user interfaces. It was from these designs along with utility patents, trademarks and trade dress  that Apple enforced  rights against Samsung.

Part of the Apple v. Samsung case that yielded the $1.05 billion jury verdict in August 2012 has been reversed due to trade dress issues. While upholding the ruling that Samsung breached a series of patents, the court found that Samsung hadn’t in fact breached ‘trade dress’ rules.


  • Registered Trade Dress (reversed)
    Finding that the asserted registered trade dress of the home screen, with detailed description of icons, plus the shape of the phone was “functional” and therefore not protectable via trade dress.
  • Unregistered Trade Dress (reversed)
    Finding that the asserted trade dress of the home screen plus the shape of the phone was “functional” and therefore not protectable via trade dress.
  • Design Patents D’677, D’087, D’305 (affirmed)
    Infringement, claim construction, ornamentally, anticipation, obviousness, indefiniteness, and damages.
  • Utility patents ‘163 and ‘915 (affirmed)
    Validity, damages.

Trade dress rights took a big hit because the court concluded that the asserted trade dress directed at the industrial design of the phone was “functional” and thus not protectable under the Lanham Act, which governs trade dress rights.

Design patents were the winner because the courts have largely adopted the multiplicity of forms theory in this regard. As long as the design is not solely dictated by function the design will be deemed “ornamental” unlike trademark and trade dress law. The Patent Act does not require a design patent claim, or any of the visual elements that make up the protected design, to be “non-functional.”

Design patents have a remedy which provides for the disgorgement of all of the infringer’s profits. Apple was entitled to Samsung’s entire profit from the sales of the infringing phones.

The damages awarded to Apple in the trial now sits at around $550 million, but a decision on the exact final amount owed by Samsung is set to be reached by a lower court later this year.


Intellectual Property in South Africa

Copyright does NOT have to be registered in South Africa. Copyright vests in the author of a work once the work is created in a material form. In South Africa, the term for copyright protection is 50 years, either from the end of the year in which it was created or made publicly available.

A South African patent may be granted for an invention or idea that is new, inventive and useful. Obtaining a patent in South Africa is a two-step process, with the two steps being spaced 12 months apart. A provisional patent application is filed in order to obtain the earliest possible date from which to claim rights.

A registered design protects the appearance of an object. Aesthetic designs protect the appearance of an object irrespective of the aesthetic value thereof. Functional designs protect the appearance of an article in as far as its appearance is necessitated by the function that the object is to perform.

A trademark distinguishes your goods or services from the goods or services of others.  Once a trademark is registered in South Africa it needs to be renewed every 10 years to stay in force. A trademark may be registered forever.  Name, Slogan, Logo, Shapes, Motions, Positions, Gestures, scents, Sounds, Textures.