Mic drop – the Federal Court finds infringement of a registered design
Registered designs are an important, but sometimes overlooked, form of intellectual property. A recent Federal Court decision has reiterated a number of important principles of Australian designs law, and is a timely illustration that registered designs can be a powerful tool to help organisations protect the visual appearance of their products.
- In a recent Federal Court decision (GME Pty Ltd v Uniden Australia Pty Ltd  FCA 520), Justice Burley found that a registered design in respect of a microphone had been infringed by a product that was substantially similar to it in overall impression.
- The court's decision provides a timely reminder that registered designs can be a highly effective way to prevent competitors from appropriating the visual appearance of your organisation's products.
- The decision reiterates that it is not permissible to mosaic designs in the prior art in order to impugn the registered design's newness or distinctiveness. Instead, the court must compare a registered design to each design in the prior art on a design-by-design basis.
- A court is more likely to find infringement if the registered design is more similar to the allegedly infringing product than it is to any other product in the prior art.
Who in your organisation needs to know about this?
Designers, and those responsible for publishing designs or filing design applications; legal counsel.
Remind me — what are registered designs?
Registered designs are often overlooked in favour of other intellectual property rights such as trade marks and copyright. It follows that many people are unfamiliar with the protection that is afforded to registered designs under the Designs Act 2003 (Cth) (the Act).
Broadly, the Act provides protection for the overall appearance of a product, which results from one or more visual features of the product (including its shape, configuration, pattern and ornamentation).
A person infringes a registered design if:
- they do certain acts (such as making, importing or selling) in relation to a product; and
- that product embodies a design that is identical, or substantially similar in overall impression, to a registered design that is valid.
The Federal Court's decision
GME Pty Ltd owns a registered design for a microphone, shown below:
GME claimed that this registered design was infringed by a microphone manufactured by Uniden Australia Pty Ltd, shown below:
Justice Burley found that Uniden's product was substantially similar in overall impression to GME's registered design and therefore infringed it.
In reaching this conclusion, his Honour observed several considerable similarities between the two designs. This included:
- the overall shape of the microphone;
- the arrangement of the screen and its surrounds; and
- the 'boss and grommet' connecting a cable to the microphone.
Although his Honour also observed a number of differences between the designs, the Act required him to give greater weight to the similarities between the designs than to any differences. Another important factor in his Honour's reasoning was the finding that GME's design was more similar in overall impression to Uniden's product than it was to any of the other microphone designs in the prior art to which the court was directed (and that the court considered on a design-by-design basis).
The Federal Court's decision serves as a reminder that registered designs can be an effective tool to protect the visual appearance of products. It is also timely, as there have been recent amendments to the Act (on which we have previously reported).
The decision underscores the importance of understanding the role that registered designs might play in your organisation's brand protection strategy. While other forms of intellectual property such as copyright and registered trade marks also have a role to play, each has limitations. Therefore, the most effective brand protection strategies often rely on a combination of intellectual property rights.
Equally, it is critical to understand whether your products are at risk of infringing any registered designs or other forms of intellectual property owned by competitors. For example, in a later judgment, Justice Burley made declarations and ordered injunctions and costs against Uniden for the infringement (see GME Pty Ltd v Uniden Australia Pty Ltd (No 2)  FCA 638).
Actions you can take now
- Consider whether your company's products could benefit from registered design protection.
- Get in touch with our firm if you have questions or would like assistance.
Source : allens.com