In GME Pty Ltd v Uniden Australia Pty Ltd [2022] FCA 520, the Federal Court considered whether the design of Uniden’s proposed XTRAK UHF radio microphone was substantially similar in overall impression to a registered design owned by GME.
The dispute concerned two handheld microphones that shared a tapered body, a prominent press-to-talk button, a display screen, groups of control buttons and a cable connection at the base. Uniden identified a number of differences between the products, particularly in the lower button arrangement, speaker grille and shape of the housing.
Those differences were not enough to avoid infringement.
Justice Burley found that the similarities in the products’ overall shape and combination of visual features created substantially the same overall impression. The decision provides a practical illustration of how Australian courts assess registered design infringement and why changing individual details may not be sufficient where the central visual character of a design has been retained.
Background of the Dispute
GME owned Australian registered design number 201613671 for a microphone. The design had a priority date of 12 July 2016 and was represented through seven drawings showing the microphone from different angles.
The registration included a statement that newness and distinctiveness were claimed in the shape and configuration of the microphone as shown in the representations. It did not identify any single feature as the most important or distinctive part of the design.
Uniden intended to launch its XTRAK UHF mobile radio product. GME alleged that the microphone supplied as part of that product embodied a design that infringed its registered design.
Uniden did not challenge the validity of GME’s registration. The central dispute was whether the XTRAK microphone was identical or substantially similar in overall impression to the GME design for the purposes of section 71 of the Designs Act 2003 (Cth).
The case was brought to a final hearing promptly, removing the need for a separate interlocutory injunction hearing. Questions concerning compensation and other financial relief were left to be determined after the infringement issue.
Test for Registered Design Infringement
Under section 71 of the Designs Act, a person may infringe a registered design by making, importing, selling or commercially using a product that embodies a design which is identical or substantially similar in overall impression to the registered design.
The test is visual and qualitative. It does not depend on whether the alleged infringer copied the registered design, nor is it resolved by preparing a numerical list of matching and differing features.
The Court must consider the appearance of the products as a whole.
At the time relevant to the GME design, section 19 required the Court to give more weight to similarities than differences. The Court also had to consider the state of the prior art, any statement of newness and distinctiveness, the importance of any similar part within the design as a whole and the freedom available to the designer to innovate.
These matters were assessed from the perspective of the informed user, being a person familiar with the product or similar products.
This did not mean that the Court could rely on a casual glance. The comparison required a careful and deliberate visual examination. Small details could be relevant, but only to the extent that they affected the overall impression created by each design.
The GME Registered Design
The GME design was for a handheld microphone connected to another device by a cable.
From the front, its overall shape was described as a vertically symmetrical, curve-sided trapezoid that tapered towards the base. The housing included a small step-in or narrowing at the waist, immediately below the speaker. This step continued around the sides and towards the rear of the product.
A rectangular display screen appeared near the top of the microphone. Beneath it was a group of six upper buttons arranged in two rows of three.
A narrow, curved speaker grille separated the upper buttons from a lower group of buttons. The lower group consisted of a central trapezoidal button surrounded by five additional buttons.
The left side of the microphone contained a large press-to-talk button. The button widened towards the top, narrowed towards the bottom and included horizontal grip ridges.
At the base of the microphone was a boss connected to a cable grommet. The boss and grommet were shaped like a truncated rectangular pyramid and followed the tapering lines of the housing.
Justice Burley considered that the features most prominent to the eye were the overall shape, the screen, the separated groups of upper and lower buttons, the press-to-talk button and the boss and grommet. These features worked together to produce a visual flow from the top of the housing through to the cable connection at the base.
The Prior Art
The Court considered nine earlier microphone products as part of the prior art base.
These products showed that certain features were common within the category. Handheld microphones would often have a body that could be held in one hand, a press-to-talk button on the side, control buttons on the front and a cable grommet at the base. Many also included a display screen and speaker.
However, the presence of these common components did not mean that all handheld microphones produced the same visual impression.
The prior art showed considerable variation in the shape of the housing, the arrangement and appearance of the buttons, the design of the press-to-talk control, the placement of the speaker and the form of the cable connection.
Some products had rectangular housings. Others were tapered or visibly waisted. Certain products had numerical keypads, central navigation controls or prominent speaker grilles. Others had no front speaker or display screen.
The Court found that none of the prior art products combined the relevant features in the same way as the GME design. Even the products with a similar tapered shape had clearly different front faces, button arrangements or press-to-talk controls.
This was important because the distinctiveness of a design may lie in a combination of features, even where some or all of those features were individually known.
Expert Evidence
Both parties relied on evidence from industrial designers.
GME’s expert, Graeme MacDonald, had worked as a designer since 1981 and had considerable experience designing radio frequency products and handheld radios. His work included examining competitor products to understand their construction and styling.
Uniden relied on Andrew Simpson, an industrial designer with experience across consumer electronics and other product categories. Although Mr Simpson had not professionally designed handheld radio microphones, he had used similar devices and had provided design advice involving radio systems.
The Court considered that both experts could assist with the perspective of a person familiar with the relevant products. However, greater weight was given to Mr MacDonald’s experience in the professional design of handheld microphones.
The differences between their evidence were particularly relevant to the extent to which functional and ergonomic requirements limited the appearance of the product.
Functional Requirements and Freedom to Innovate
Uniden argued that functional limitations largely drove the design of handheld radio microphones. It pointed to the need for the device to fit comfortably in one hand, the usual placement of the press-to-talk button on the left side, the position of the screen near the top and the location of the cable connection at the base.
The Court accepted that these considerations imposed some limits.
A microphone had to be capable of being held and operated securely. The screen needed to remain visible while the controls were being used. The press-to-talk button had to be placed where it could be reached conveniently, and the cable needed to extend from a position that did not interfere with operation.
However, Justice Burley rejected the broader argument that these requirements drove the entire design or caused all products in the category to look similar.
The prior art demonstrated that designers retained considerable freedom in choosing the overall silhouette, the arrangement of controls, the shape and integration of the press-to-talk button, the speaker treatment and the relationship between the different parts of the housing.
The informed user would therefore be sensitive to variations in those features and to the way they were combined.
Comparison of the GME Design and the XTRAK
The Court identified several important similarities between the GME design and the XTRAK microphone.
Both products had a vertically symmetrical, curve-sided trapezoidal shape that tapered towards the base. The press-to-talk buttons were also very similar in shape, size and placement. In each product, the button visually blended into the curved outer silhouette of the housing.
The screens and their surrounds were located in similar positions and had similar proportions. Both products also had six upper buttons arranged below the screen. Although the individual XTRAK buttons were more clearly separated, the outer buttons followed the curvature of the housing in much the same way as the GME design.
Both products created a visible break between the upper and lower button groups. In the GME design, the break was created by the curved speaker grille. In the XTRAK, it was created by two moulded protrusions and the upper section of the speaker.
The boss and grommet at the base of each microphone were also similar. Both used a truncated rectangular pyramid shape that continued the tapering visual line of the housing.
Taken together, these elements reinforced the shared overall silhouette and gave the products a similar visual flow.
The Differences Between the Products
Uniden relied on several differences.
The XTRAK housing had a smoother outer edge, while the GME design included a step-in at the waist. Uniden’s expert described this step as a dominant feature that gave the GME design a more technical and durable appearance.
The Court did not accept that characterisation.
Justice Burley found that the step-in contributed to the design but was not a strong or dominant visual element. When the design was viewed as a whole, the step was a relatively minor feature within the broader tapered silhouette.
The products also had different lower button arrangements. The GME design included a central trapezoidal button with five surrounding buttons. The XTRAK instead had four lower buttons placed in two columns.
There were further differences in the speaker grilles, the buttons on the top of the housing and some of the details on the rear of the products.
These differences were relevant, but the Court considered that they did not outweigh the stronger similarities in the shape, screen, press-to-talk button, button separation and base connection.
The Court’s Decision
The Court found that the XTRAK embodied a design that was substantially similar in overall impression to the GME registered design.
This conclusion was not reached by treating every common feature as proprietary to GME. The Court recognised that screens, buttons, speakers, press-to-talk controls and cable grommets were common components of handheld microphones.
What mattered was how those components had been selected, shaped, positioned and combined.
The XTRAK was closer in overall impression to the GME design than any of the earlier products considered as prior art. Although certain prior products shared a tapered shape or other individual features, their front faces and control arrangements produced visibly different impressions.
By contrast, the XTRAK reproduced several of the GME design’s most visually prominent features in a closely comparable arrangement.
After giving greater weight to the similarities, as section 19 required, the Court held that GME had established design infringement.
Commercial Significance
The decision provides several useful lessons for designers, manufacturers and businesses developing products in established technical categories.
First, a registered design may protect a combination of features even where individual elements of the product are already known. A screen, button or speaker may be commonplace, but the way those elements are combined can still create a distinctive overall appearance.
Second, changing a few components will not necessarily avoid infringement. Differences must be considered according to their visual significance within the whole product. A redesigned button group or speaker grille may carry limited weight where the dominant silhouette and other prominent features remain substantially similar.
Third, functional requirements do not provide a general defence to design infringement. Courts will recognise genuine technical and ergonomic constraints, but they will also examine the prior art to determine how much visual freedom remained available. Where earlier products show substantial variation, it may be difficult to argue that close similarities were functionally unavoidable.
Fourth, the statement of newness and distinctiveness can influence the focus of the infringement analysis. GME’s statement claimed the shape and configuration shown in the representations without singling out one feature. The Court therefore considered the complete appearance rather than treating one element as the exclusive source of distinctiveness.
Fifth, prior art can affect both the scope of protection and the assessment of infringement. A crowded field may mean that relatively small differences create a different overall impression. A diverse prior art base may have the opposite effect by showing that the designer had many alternative ways to produce a functional product.
Finally, businesses should conduct design clearance before committing to a product launch. The proper comparison is not limited to whether a new product contains different buttons, textures or decorative details. It should consider whether the overall silhouette, proportions and arrangement of prominent features remain too close to an existing registered design.
The decision demonstrates that overall impression is not a vague or superficial test. It involves a careful visual assessment of the product as a complete design, informed by the prior art, the practical constraints of the category and the relative importance of its similarities and differences.
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