Uniden Australia Pty Ltd (Uniden) is an Australian manufacturer of handheld mobile radio products including radios, phones, and dash cams. Uniden created a radio product they called the XTRACK UHF, which was a handheld mobile radio device.
GME Pty Ltd (GME) is also an Australian manufacturer of a large range of radios, antennas, and entertainment products. GME commenced proceedings against Uniden on the basis that Uniden’s XTRACK UHF product included a similar appearance to a design of a radio product registered by GME under the Design Act 2003 (Cth).2 The Court considered, in accordance with section 19 of the Design Act 2003 (Cth)3, whether the overall impression, functionality and nature of the XTRACK UHF device to determine whether the infringement allegation had merit.
Justice Burley concluded that Uniden’s XTRACK UHF product infringed the registered design rights of GME on the basis that the Uniden product embodies a design that is substantially similar in overall impression to GME’s Registered Design. What was compelling to Justice Burley in this case was the lack of any distinction between the designs, and their similarity with respect to both appearance and functionality. On this basis, Justice Burley was satisfied that the “similar in overall impression” infringement threshold was satisfied.
This decision provides a good example of why it’s so important for individuals and businesses to conduct necessary due diligence, including a search of the Australian Designs Register, before releasing new products to market. Releasing a product that is similar in overall impression to another product that is the subject of a registered design is sufficient for the registered design owner to establish infringement of their registered design rights.
1 GME Pty Ltd v Uniden Australia Pty Ltd  FCA 520.
2 Design Act 2003 (Cth).
3 Ibid s 19.