Federal Court finds that XTRAK crosses the design infringement line

What you need to know

• GME succeeded in its design infringement claim against Uniden in relation to the design of a CB radio.
• The Federal Court found that the Uniden's XTRAK product was substantially similar in overall impression to the GME design.

What you need to do

• If you manufacture or use a product for which there is limited scope for variation in design, be aware that when design infringement is assessed in those cases more weight is given to small differences between the designs.
• When designing a new product, ensure that a check of the designs register is part of that process so that you take into account any relevant design registrations.
• Seek registration of your product designs. As this decision illustrates, design registrations can be a powerful tool to protect your market position.

The GME design and alleged infringement

GME is the registered owner of a design (No 201613671) for a CB radio. Images of the design are depicted below.

GME alleged that Uniden's XTRAK product threatens to infringe its registered design. Images of the XTRAK product are depicted below.

Uniden accepted the validity of GME's design registration but denied that the XTRAK product would infringe the design.

While GME had originally sought interlocutory relief, the matter was instead brought quickly to a final hearing.

The Federal Court's decision

Justice Burley held that the XTRAK product would infringe GME's design because he found that it embodies a design that is substantially similar in overall impression to the GME design.

Substantially similar in overall impression

Justice Burley stated that when determining whether designs are substantially similar:

It is necessary to focus on the overall impression created by the two designs. This is done not by ignoring matters of detail, but by assessing the impact of particular visual features, including any matters of detail, on the overall impression created by each of the two designs.

Justice Burley referred to section 19 of the Designs Act 2003 which requires the Court to give greater weight to the similarities between designs rather than the differences and noted that the state of the prior art is also relevant as is the nature of the design in question. Of particular relevance to the products in question in this dispute, Justice Burley stated that where there is limited scope for variations and limited scope to innovate, more weight is given to small differences in the designs.

When assessing the designs Justice Burley took into account that a user of the XTRAK product will usually hold the device in one hand and will typically see the front or isometric view.

Prior art designs

Considering the prior art designs, Justice Burley concluded that an informed user would consider the XTRAK product to be more similar to the GME design than to any of the other prior art designs. Burley J noted that that the two most similar prior art products have more obviously different front appearances compared to the GME design than the XTRAK product. Images of the prior art designs can be seen in the appendix of the decision here.

Comparison of GME design and XTRAK design

Comparing the GME design and the XTRAK design Justice Burley focused on the following similarities in the products:

• the overall shape of the designs as curve-shaped trapezoids that taper towards their base (where the cord connects);
• the very similar push-to-talk buttons on the left-hand side of the designs; and
• the clear separation between the upper and lower buttons on the face of both designs.

Justice Burley noted that the similarity in overall shape and silhouette are likely to make a strong visual impression.

Accordingly, taking into account the similarities and differences in the designs, but placing more weight on the similarities as required by section 19, Justice Burley concluded that the XTRAK product is substantially similar to, and therefore would infringe, the GME design.

In a separate decision Justice Burley ordered injunctive relief preventing Uniden from making, importing, selling or using the XTRAK product. Uniden was also required to pay GME's costs of the proceedings.

Authors: Annika Barrett, Senior Expertise Lawyer and Lisa Ritson, Partner.