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Distinct product design is the best way for manufacturers to ensure they won’t be slapped with an infringement notice when it’s too late in the game – and a recent case involving communications devices has proven just that.

On 9 May 2022, the Federal Court of Australia delivered its judgment in the matter of GME Pty Ltd (GME) v Uniden Australia Pty Ltd (Uniden) [2022] FCA 520. In his judgment, the Hon. Justice Burley found that Uniden had infringed on GME’s design right. This decision closely considered the infringement test of “similar in overall appearance”, especially in the context of existing products and functionality constraints. It reinforced the importance for manufacturers to register their designs and to ensure their products are distinct from competitors’.

the case

GME is an Australian manufacturing business, which produces communication devices such as radios. GME registered its design for its hand-held radio under the Designs Act 2003 (CTH) (Act) on 12 July 2016. GME launched proceedings against Uniden, a Japanese wireless communications business as its design for the XTRAK UHF mobile radio product (XTRAK) left a similar impression to GME’s product.

For reference, the first image is GME’s registered design while the second is of the XTRAK product:

what constitutes general radio design components?

In deliberating over the matter, the Hon. Justice Burley accepted the testimony of GME’s chosen radio design expert, that some parts of the radio design were similar due to the nature of the product and its functionality. The failure to incorporate certain elements would impact the product’s ability to be used as required. Features such as the shape of the radio, the location of the user interface and the “press to talk” (PTT) button being positioned on the left-hand side of the radio, the court held would be common amongst radio designs.

court considers similarities and differences

The Act requires a focus on the similarities rather than the differences when a product to a registered design.  Upon review, Justice Burley considered the following as similarities between the designs:

• the overall shape, in that both are vertically symmetrical curve-shaped trapezoids;
• screen arrangement and surrounds;
• the PTT button;
• the boss and grommet of the radios; and
• spatial separation between the upper and lower buttons.

The smooth silhouette of the XTRAK design compared to the GME’s step-in was found to be a distinct difference, however Justice Burley did not consider this as a dominant visual feature. The most significant difference between the designs was the button arrangement. The XTRAK radio buttons were arranged in two columns, comparative to the GME design which were aligned in two rows, with a speaker grille underneath separating the lower buttons.

The court also looked at the prior art for these products – that is, the range and shape of other products already in the market when GME’s application was made. At that time, there were several products but only a few with a similar overall shape, but other substantial differences. The prior art is relevant when assessing the freedom for a designer to innovate. In a crowded market that freedom is limited so more weight is given to smaller differences outside the prior art.

what was the outcome?

Despite these differences, the court, having regard to section 19(1) of the Act, giving more weight to the similarities between the product and the design, held that Uniden had infringed GME’s design rights, as XTRAK left a substantially similar overall impression to GME’s product.

take-aways for manufacturers

This case provides significant lessons for businesses. Even if another design is used only as an inspiration for a product and the product has some distinct differences, this may not be enough for the product not to leave a different impression on consumers. And of course, because designs infringement does not rely on actual copying, it is important to undertake thorough design searches before launching any new product, even if there is no intention to copy or, even, awareness of the design.

It is further evidence of how important it is for businesses to register their product designs given the strong protection it provides. With the recent amendments to the Act (especially in relation to the grace period), registering designs has never been more accessible.

If you are a manufacturer looking for advice to safeguard your product designs, don’t hesitate to contact our Intellectual Property team for advice.

The information contained in this article is general in nature and cannot be relied on as legal advice nor does it create an engagement. Please contact one of our lawyers listed above for advice about your specific situation.