GME Pty Ltd v Uniden Australia Pty Ltd
 FCA 520
Registered designs – whether respondent’s product is substantially similar in overall impression to the registered design – consideration of relevant factors
GME Pty Ltd contended that Uniden Australia Pty Ltd threatened to infringe its registered design by the launch of its XTRRAK UHF mobile radio product. The GME design is registered under the Designs Act 2003 (Cth) for a microphone – in particular, a microphone for use with a “walkie talkie”. Validity was not disputed but Uniden denied infringement. The proceedings were fast tracked (rather than proceed by way of application for interlocutory injunction), and dealt with liability alone.
As outlined by the Court, a person infringes a registered design if the infringing product embodies a design that is substantially similar in overall impression to the registered design: section 71(1)(a) of the Act. This involves a qualitative evaluation of the importance of the similarities and differences between the competing designs, focussing on the whole of the appearance, rather than counting the differences. It is necessary for the Court to apply the standard of the informed user within section 19(4) of the Act (expert evidence), having regard to the prior art.
In relation to the informed user, Justice Burley outlined in detail the evidence of the respective experts, namely that of Mr MacDonald for GME, and Mr Simpson for Uniden. His Honour commented that, while Mr MacDonald’s professional experience in the design of handheld microphones exceeded that of Mr Simpson, both met the description of the informed user within section 19(4) of the Act. In this regard, his Honour approached the evidence of the experts in light of the comments by Justice Yates in Multisteps Pty Ltd v Source and Sell Pty Ltd  FCA 743 at -. Notably the necessary and only qualification is that the person be familiar with the product or similar products. No matter how such a person might come to be appropriately qualified, he or she will have an awareness and appreciation of the visual features of a product that serve its functional as well as its aesthetic purposes. This ‘familiarity’ approach is broader than the approach adopted by Kenny J in Review 2 Pty Ltd v Redberry Enterprise Pty Ltd  FCA 1588, where her Honour was guided by European authorities and concluded that the informed user must be a user of the class of product in question.
The Court noted that, in assessing whether or not there was an infringement of a registered design, it is necessary for the Court to focus on the overall impression created by the two designs. This is not done by ignoring matters of detail, but by assessing the impact of particular design features, including any matters of detail, on the overall impression created by each of the two designs. The Court also noted that section 19(1) of the Act requires the Court to give more weight to the similarities between the designs than to the differences between them. Justice Burley referred to Keller v LED Technologies Pty Ltd  FCAFC 55, where the court noted at  the comments by Laddie J in Household Articles Ltd’s Registered Design  FSR 676 at 686, that:
A design can be novel even if it is made up entirely by blending together a number of old designs provided the resulting combination itself has a sufficiently distinctive appearance. It is only where all the features have been used before, and used commonly (or are immaterial), that the Act deems them to be novelty-destroying.
Justice Burley also noted that section 19(2)(d) of the Act requires the Court to have regard to “the freedom of the creator of the design to innovate”.
Guided by the evidence from the experts, Justice Burley carefully examined a number of prior art devices, noting that section 19(2)(a) of the Act requires the Court to have regard to the state of the development of the prior art base for the design. His Honour also noted that a number of features of the prior art devices were common to microphones but that there was considerable variability within the design characteristics of each. Having regard to the prior art base, his Honour then considered relevant functional aspects of microphones and freedom of designers to innovate. His Honour accepted that there are basic ergonomic requirements the designer has to consider when designing radio frequency products, and in particular handheld radio and microphone products, that limit the freedom to innovate. However, his Honour did not accept that functional limitations “drive the design”. Nor did his Honour accept (as Uniden submitted) that all of the designs “look so similar”. Rather, his Honour was of the view that the informed user will be attuned to variation and that there was considerable scope for variability within each of the features and as such, there was freedom of the creator of the design to innovate.
Having regard to the relevant legal principles, his Honour then compared the two products identified below.
His Honour set out in detail the similarities and differences between the GME design and the XTRAK device, noting that the overall shape of the XTRAK is very similar to the GME design in that both are vertically symmetrical curve-shaped trapezoids, tapering to the base.
Justice Burley noted one point of difference is that the XTRAK has a smooth silhouette whereas the GME design has a step-in in its lower third on its front and sides that follows around to the lower portion of the housing at the rear. His Honour did not consider that the step-in was a strong, let alone the dominant visual element, of the design. Rather, his Honour concluded that it was one of the aspects that added to the overall aesthetic. His Honour considered the similarity of overall shape and silhouette to be important points likely to make a strong visual impression.
His Honour also noted that the screen arrangement and screen surrounds are very similar and that the PTT button is also very similar in both, the latter being a prominent feature, and one that is curved to blend in with the overall silhouette of the devices. The boss and grommet on both were also very similar. Justice Burley noted that the effect of these similarities was to accentuate the vertically symmetrical curve-shaped trapezoid shape of the XTRAK, which is a significant aspect of the GME design. His Honour also noted that another relevant similarity is the fact that both have clear spatial separation below the upper buttons and the lower buttons. In the case of the XTRAK, this is created by the first of the speaker grilles and the two dummy buttons, in the case of the GME design it is created by the speaker.
His Honour considered these similarities against three relevant differences. First, the smooth housing shape of the XTRAK compared to the GME design, which includes the step-in at its waist and extending around the device. Secondly, the arrangement of lower buttons around a central trapezoidal button in the GME design compared with the two columns of buttons separated by the central column of the speaker grille in the XTRAK device. Thirdly, the row of two dummy buttons and the central row of the speaker grille in the XTRAK compared to the speaker in the GME design. His Honour noted that other differences and similarities were relatively trivial and he gave them lesser weight.
Taking into account these similarities and differences, but placing more weight on the similarities between the designs than the differences as required by section 19(1) of the Act, Justice Burley considered that the XTRAK embodied a design that was substantially similar in overall impression to the GME design.
Justice Burley also took into account the state of development of the prior art in making his assessment, in accordance with section 19(2)(a) of the Act. His Honour concluded that the informed user would regard the XTRAK to be more similar in overall impression to the GME design than any of the other prior art devices. His Honour concluded that the prior art base demonstrated that the overall shape of each of the devices considered in the case varied considerably and that the two closest pieces of prior art had more obviously different appearances in terms of their front face arrangements.
His Honour also noted that the statement of newness and distinctiveness of the GME designs drew attention to no individual aspect to which “particular regard” should be given pursuant to section 19(2)(b) of the Act.
Justice Burley concluded that having regard to all of these matters, the XTRAK device was substantially similar in overall impression to the GME Design.