Often customers wonder whether they should apply for patent protection OR design protection. Although the facts of each scenario may make patent or design protection impractical, the case of GME Pty Ltd v Uniden Australia Pty Ltd  FCA 520 makes it clear that design protection is not to be neglected.
Generally, 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.
The Designs Act states that a person infringes a design if, upon registration of the design:
(a) manufactures or offers to manufacture a product;
(b) imports for sale;
(c) sells, rents or otherwise transfers;
(d) uses a Product for commercial or commercial purposes; Where
(e) maintains a product for any of the above
in relation to which the design is registered, which embodies a design which is identical or substantially similar in general impression to the registered design.
While a registered design may inherently protect the function of a product, design protection is more broadly focused on the appearance of a product. It is important to note that when comparing an allegedly infringing product to a registered design, the product is considered as a whole and is, in most cases, essentially limited to visual characteristics.
In this case, His Honor considered a number of factors including, but not limited to, the location of the 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; location and shape of the microphone; and the location and shape of the microphone. His honor also considered how a user would use each of the products.
In reaching a decision, His Honor considered the development of prior art which included a number of similar products, namely microphones supplied by Motorola, Standard Horizon, Simoco, GME, ICOM, Crystal and Uniden. While challenging the validity of a registered design can be an effective strategy, Uniden has made no such argument.
There is no universal rule for comparing a potentially infringing product to determine if a product infringes a registered design. Further, it is important that if or when contacting the alleged infringer, any communication is carefully crafted to avoid making threats that could constitute an unwarranted threat. Any unwarranted threat may provide a means for the recipient of the unwarranted threat to seek redress in court.
Ultimately, Burley J concluded that the Uniden XTRAK product embodies a design whose overall impression is substantially similar to that of the design. Although the life of a registered design in Australia is limited to 10 years, the power and protection provided by a registered design cannot be underestimated. The remedy available to the owner of a registered design that has been infringed may include injunctive relief, damages and/or a reckoning of profits.