The decision by the Federal Court of Australia in GME Pty Ltd v Uniden Australia Pty Ltd  FCA 520 (9 May 2022) reinforces the following points with respect to design infringement in Australia:
- It is critical to engage experts who are representative of the standard required for assessing whether two designs are substantially similar in overall impression.
- The standard need not be a user, but rather requires familiarity of the product in question.
- The viewpoint of the notional person may be drawn to particular visual features which place a greater significance on the overall impression.
- Greater differences between the registered design and the prior art will generally mean a court will be more likely to find common features between the design and the alleged infringing article to support a finding of infringement.
GME Pty Ltd (GME) is the owner of a registered and certified design (no. 201613671) under the Designs Act 2003 (Cth) for a ‘Microphone’. Relevant images from the GME design registration are shown below:
GME commenced proceedings in the Federal Court of Australia to enforce its design monopoly rights against Uniden Australia Pty Ltd (Uniden), who was intending to introduce its ‘XTRAK’ UHF mobile radio product to the market.
Uniden accepted the validity of GME’s design registration but denied that the XTRAK product would infringe the design. While GME had originally sought interlocutory relief, the matter was instead brought quickly to a final hearing.
For comparison, corresponding views of Uniden’s ‘XTRAK’ product are shown below:
Generally speaking, a registered design will be infringed if a person uses a product bearing a design which is identical to, or substantially similar in overall impression to, the registered design. Such uses can include making, selling or offering to make or sell the product.
The question of whether two designs are ‘substantially similar’ requires a qualitative, rather than quantitative, assessment of the visual similarities and differences between the two designs. An emphasis is to be given to the impact of these visual features on the overall impression created by each of the two designs.
The following factors are considered in assessing substantial similarity in overall impression:
- More weight is to be given to the similarities between the designs than the differences between them;
- Regard is to be given to the state of development of the prior art base;
- Particular regard is to be given to the features of the registered design identified in any Statement of Newness and Distinctiveness;
- If any part of the design is substantially similar, regard must be given to the amount, quality and importance of that part in the context of the design as a whole; and
- Regard is to be given to the freedom of the designer(s) of the design to innovate.
Importantly, the above assessment is undertaken from a notional point of view of a person who is familiar with the product to which the design relates, or products similar to the product to which the design relates (‘the standard of the informed user’).
GME relied on evidence from an expert with extensive industrial design experience particularly involving the industrial and mechanical design of handheld radios. By contrast, Uniden relied on evidence from an industrial designer with no experience in designing handheld microphones but was a user of handheld microphones including some within the prior art presented in the present proceedings.
Whilst regarding both experts to be broadly persons who were familiar with the product to which the design relates, Justice Burley considered that the professional experience of the GME expert in the design of handheld microphones exceeded that of the expert for Uniden.
Justice Burley commenced with the assessment of substantial similarity by taking into account those features that a user of such devices will likely see during use, that is, holding the device in one hand, with the user often looking at the screen and buttons, speaking into the front face microphone. This is similar to the approach taken by J V Nicholas in Hunter Pacific v Martec.
The features common to the GME design and Uniden’s ‘XTRAK’ product are labelled below:
Justice Burley made the following observations as to the similarities between the two designs:
- Outer silhouette (vertically-symmetrical curve-sided trapezoid tapering to the base).
- PTT button that tapers from a protruded point at towards the top to meet with the housing at its lowermost part.
- The screens and screen surrounds.
- Outer edges of both sets of upper buttons are curved to follow the contour of the silhouette, and each presents as a set of six buttons in three rows, which gives the upper button array a measure of similarity.
- Shape of the boss and grommet.
- Rear view shows six screws and a hanging lug in the centre of the upper portion.
- Clear spatial separation below the upper buttons and the lower buttons.
Justice Burley noted the following differences between the two designs:
- Step-in, which is visible in the front and isometric views of the GME design.
- In the ‘XTRAK’ product, beneath the upper buttons is a horizontal line represented by two moulded protrusions (referred to in the evidence as “dummy buttons”) one on either side of the first louvre of the speaker. Extending beneath the central first louvre are three further, centrally arranged louvres that make up the speaker.
- Configuration of the lower buttons.
- The grommet in the GME design has different cut-outs.
- In the ‘XTRAK’ product, there are two recessed buttons at the top marked “power” and “inst”, whereas the GME design only has one button on the right-hand side.
- Hemisphere shape of the lug on the back of the ‘XTRAK’ product, whereas the lug on the GME design is flatter.
- In the GME design, there is a small recess for the microphone, whereas it is concealed in the ‘XTRAK’ product.
In evaluating the impact of these similarities and differences on the overall impression, Justice Burley disagreed with the expert evidence submitted by Uniden that functional limitations “drive the designs of handheld radio microphones”. Instead, Justice Burley favoured expert evidence submitted by GME that there is a considerable scope for variability within each of the above visual features.
Regarding the similarities, Justice Burley agreed with GME’s expert evidence that the similarity of overall shape and silhouette are important points likely to make a strong visual impression and that the other similar features accentuate this aspect of the design. Regarding the differences, Justice Burley disagreed with Uniden’s expert evidence that the step-in feature is a “dominant visual element” of the GME design, instead referring to the isometric view to support Justice Burley’s contention that the step-in feature is a relatively minor aspect of the overall shape and silhouette. Justice Burley also considered the other points of difference to be relatively minor.
Having regard to the prior art base which demonstrated that the overall shape of similar products varies considerably (e.g. from broadly rectangular to trapezoidal and therefore Uniden had substantial freedom to innovate) Justice Burley concluded the informed user would regard the ‘XTRAK’ product to be more similar in overall impression to the GME design than any of the other prior art devices.
Justice Burley found that GME has established its case of design infringement in respect of Uniden’s ‘XTRAK’ product.
Whilst the expert for Uniden had some use of handheld microphones, it is apparent His Honour was greatly influenced by the qualification of GME’s expert who had first-hand design experience of radio products. This case therefore demonstrates the value of identifying a relevant expert in the field of the design.
In a later decision, Justice Burley ordered injunctive relief preventing Uniden from making, importing, selling or using the XTRAK product. Uniden was also required to pay GME’s costs.
 For design applications filed on or after 11 September 2021, the standard has moved from the standard of an informed user to a standard of a person who is familiar (‘the familiar person’) with the product to which the design relates, or products similar to the product to which the design relates (whether or not the familiar person is a user of the product to which the design relates or of products similar to the product to which the design relates).