Copy That – GME makes the Case for Design Protection

Often times clients question whether they should seek patent protection OR design protection. While the facts of each scenario may render either patent or design protection impractical, the case of GME Pty Ltd v Uniden Australia Pty Ltd [2022] FCA 520 makes it clear that design protection is not to be overlooked.

Background Facts

Generally speaking, GME Pty Ltd (‘GME’) is the owner of Australian registered design no. 201613671 (‘the Design’) for a microphone. Uniden Australia Pty Ltd (‘Uniden’) intended to launch its XTRAK UHF mobile radio product.  GME argued that if Uniden’s product were allowed to be sold in Australia, it would infringe the Design.[1] 

Relevant Legislation

The Designs Act states that a person infringes a design if, during the registration of the design:

    (a) makes or offers to make a product;

    (b) imports for sale;

    (c) sells, hires or otherwise disposes of;

    (d) uses a product for the purposes of trade or business; or

    (e) keeps a product for any of the aforementioned

in relation to which the design is registered, which embodies a design that is identical to, or substantially similar in overall impression to, the registered design.[2]

Comparison

While a registered design may inherently provide protection over the function of a product, design protection is more broadly focussed on how a product looks. Importantly, when comparing an allegedly infringing product to a registered design the product is considered as whole and is, in most instances, substantially limited to visual features.

In the present case, his Honour considered a number of factors including, but not limited, to the location of buttons, and in particular specific buttons such as the push to talk (PTT) button; the shape of the product as a whole; the location and shape of the screen; the location and shape of the microphone; and the location and shape of the microphone. His honour also considered how a user would use each of the products.[3]

side by side comparison of microphone designs in a case[4]

In making a determination, his Honour considered the development of the prior art which included a number of similar products namely microphones provided by Motorola, Standard Horizon, Simoco, GME, ICOM, Crystal and Uniden were considered.[5] While contesting the validity of a registered design can be an effective strategy, Uniden did not put forward such an argument.[6]

There is no universal rule for the comparison of a potentially infringing product to make a determination of whether a product infringes a registered design. Furthermore, it is important that if, or when, contacting the alleged infringer that any communication is carefully crafted so as to avoid making threats which may constitute an unjustified threat. Any unjustified threats may provide an avenue for the recipient of the unjustified threat to seek relief from the court.[7]

Conclusion

Ultimately, Burley J concluded that the Uniden XTRAK product embodies a design which substantially similar in overall impression to the Design.[8] While the term of a registered design in Australia is limited to 10 years, the power and protection provided by a registered design cannot be understated. The relief available to the owner of a registered design that has been infringed may include an injunction, damages and/or an account of profits.[9] If you or your clients are developing a product which comprises distinctive visual features and wish to seek protection for your product in Australia, please contact one of our patent attorneys at Michael Buck IP to discuss your options.

written by Caleb Maher, Patent and Trade Marks Attorney

 

 

 

 

 

 


[1] GME Pty Ltd v Uniden Australia Pty Ltd [2022] FCA 520, [1].

[2] Designs Act 2003 (Cth) s 71.

[3] GME Pty Ltd v Uniden Australia Pty Ltd [2022] FCA 520, [38].

[4] GME Pty Ltd v Uniden Australia Pty Ltd [2022] FCA 520, [66].

[5] Ibid, [7], [53]-[56], [84].

[6] Ibid, [1].

[7] Designs Act 2003 (Cth) s 78.

[8] GME Pty Ltd v Uniden Australia Pty Ltd [2022] FCA 520, [87].

[9] Designs Act 2003 (Cth) s 75(1).



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