"A Community design court hearing an action referred to in Article 81, other than an action for a declaration of non-infringement, shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties, or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the Community design is already in issue before another Community design court on account of a counterclaim or, in the case of a registered Community design, where an application for a declaration of invalidity has already been filed at the Office".

* Samsung’s claim for a declaration of non-infringement of Apple's tablet computer design need not be stayed, despite Apple’s counterclaim for infringement; the claim should proceed to trial in accordance with the judge’s previous directions;

* Apple’s counterclaim does have to be stayed, unless there are special grounds for allowing it to proceed without imposing a stay.

* The question whether the counterclaim should be allowed to continue, on the basis of special grounds, rather than being stayed in accordance with Article 91(1) was not considered by the judge, because it did not arise on the arguments put to him. Samsung did not oppose Apple’s suggestion that there ought not to be a stay of the counterclaim, but the agreement of the parties, or absence of opposition on the part of Samsung, was insufficient by itself to amount to special grounds for this purpose.

* While it would be rash to attempt to define “special grounds”, the nature and force of the special grounds which would justify not ordering a stay would need to be such as make it appropriate to allow proceedings to continue to which Article 91(1) applied, thereby opening up the possibility of parallel and active proceedings on the same issue of validity or otherwise, and therefore possible inconsistent decisions on the same point in different courts or as between a Community design court and OHIM. The grounds would have to be of sufficient importance and substance to justify that risk. 

* In this case, relevant considerations might be these: (i) the current proceedings in England do not include any issue as to validity, because Samsung has not responded to Apple’s counterclaim, as it could have done, by counterclaiming for a declaration of invalidity and the proceedings as currently constituted would not result in the court coming to a decision as to validity which would be even potentially inconsistent with whatever determination was eventually reached by OHIM; (ii) the objectively justifiable need for speed in the determination of the claim; 

* The Court of Appeal proposed to order that the issue whether the counterclaim should be stayed under Article 91(1) -- whether there are special grounds for it not to be stayed -- should be remitted to the Patents Court, to be determined upon argument at the time of the imminent trial. 

* on the question whether the claim should be stayed, thus rendering the imminent trial abortive, unless the OHIM proceedings were withdrawn very promptly, Samsung’s arguments were correct and the appeal would therefore be dismissed.