functionality

Front views of two prior art microphones, the registered design and the XTrak

A case of design

A case of design

Burley J has ruled that Uniden’s XTrak mobile radio product would infringe GME’s registered design.

Uniden had begun displaying in Australia images of its Xtrak product on its website and in its online shop, but was not yet selling the product. After an exchange of correspondence in which Uniden refused to disclose its proposed launch date, GME sought an interlocutory injunction to restrain infringement of its registered design. Instead, Burley J listed the matter for early final hearing:

How good is that?

Helpfully, Burley J’s decision includes images of the prior art as well as the registered design and the Xtrak. Front views of the two closest prior art as well as the registered design and the Xtrak are set out below:

GME Uniden and the prior art

The legal issue

By s 71, a person infringes a registered design if they make, import, sell, offer to sell etc. a product embodying a design substantially similar in overall impression to the registered design.

Whether a product is substantially similar in overall impression to a registered design is tested by the matters set out in s 19.

Those matters require the Court to give more weight to the similarities than the differnces having regard to the state of development of the prior art, whether or not there is a statement of newness and distinctiveness[1] and the freedom of the designer to innovate. As GME’s design was registered before the ACIP Response Act, these matters fell to be considered from the perspective of the “standard of the informed user”.

The s 19 factors are also used to determine the validity of a registered design.

Burley J noted that the ALRC had explained how the substantial similarity test was supposed to work at paragraph 6.7:

…. The word ‘substantially’ is preferred to ‘significantly’ because ‘substantially’ has already been interpreted in a copyright context to be a qualitative and not quantitative term. The qualitative test is useful to determine designs infringement without importing a copying criterion. A qualitative test will assist the courts in evaluating the importance of the similarities and differences between competing designs. ….

and:

The phrase ‘overall impression’ is preferred because it encourages the court to focus on the whole appearance of competing designs instead of counting the differences between them.

(The emphasis is Burley J’s.)

Burley J pointed out, therefore, the prior art is relevant not just to the validity of the design but also infringement as it helps determine the proper scope of the design.

Accordingly, where the state of the art was highly developed, distinctiveness may lie in only small advances. If so, however, a correspondingly close degree of resemblance would be required between the accused product and the registered design.

Comparing the designs

Burley J considered the overall shape of the registered design and the Xtrak was very similar, both being vertically symmetrical curve-shaped trapezoids tapering to the base. The screen arrangement and screen surrounds were very similar. As was the curved PTT (or press to transmit button) and the clear spatial separation below the upper buttons and the lower buttons.

Front views of the registered design and the Xtrac labelled to identify corresponding features
Registered design v Xtrac

His Honour noted a number of differences. The registered design had a slight “step in” feature (which contributed to the spatial separation between the upper and lower buttons on the front face); the lower buttons in the registered design were arranged a central trapezoidal button where the Xtrak had a central column of speakers; thirdly, the Xtrak had a row of dummy buttons centred on the top speaker element while the registered design displayed a curving speaker panel. Other differences, such as the visibility of the microphone and the top buttons, were relatively trivial and given less weight.

Burley J accepted that there were functional and ergonomic considerations affecting the design of such products. For example, the “basic architecture” of such products would include a PTT button, buttons, a speaker, a microphone, a boss and a downward-facing grommet. Others included a shape that could be held in one hand, the positioning of the PTT button on the left-hand side.

However, the evidence of the prior art showed there was considerable scope for variation in these features so a designer had considerable freedom to innovate.

Overall, Burley J held at [84] the Xtrack was closer to the registered design than the registered design was to the prior art and so infringed:

I take into account the state of development of the prior art in making my assessment, in accordance with s 19(2)(a) of the Act. In my view the informed user would regard the XTRAK to be more similar in overall impression to the GME design than any of the other prior art devices. The prior art base demonstrates that the overall shape of each of the devices considered in section 3.3 above varies considerably, from broadly rectangular, to trapezoidal, to the waisted rectangle of the Crystal. The two most similar to the GME design, in terms of shape, in the prior art are the TX4500S and the Standard Horizon, yet they have more obviously different appearances in terms of their front face arrangements.

2 other matters

First, the statement of newness and distinctiveness was so general, not identifying any particular features, it played no role in the assessment.

Secondly, as noted, the comparison fell to be made under the “standard of the informed user” test applicable before the amendments made by the ACIP Response Act.

Burley J applied the “familiar person” test developed by Yates J and also applied by Nicholas J, not the “informed user” approach. It does seem both practical and sensible for the Courts to apply the “familiar person” test to pre-ACIP Response Act cases now, given the divergent responses and the legislative adoption of the “familiar person” test going forward.

Final judgment matters

In his Honour’s final orders disposing of the proceeding, Burley J refused to make an order for delivery up and takedown against Uniden. The orders included an injunction, the infringing products had never been sold in Australia and there was no reason to believe Uniden would not comply with the injunction:

… the broad principle underlying the making of such order is that where an injunction has been made and, that notwithstanding, there is a basis for considering that there may be a temptation to act in breach of the injunction because of materials possessed by a party, then it may be appropriate to order delivery up and takedown: see Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2021] FCA 307. That circumstance does not arise in the present case. An injunction will be made against Uniden, a large corporation. There is no reason to believe that it would not behave in accordance with the injunction, as counsel for the applicant accepts. In those circumstances, and having regard to the correspondence which indicates that the XTRAK product has never been sold in Australia, it is appropriate to decline to make an order for delivery up and takedown.

Burley J also adopted a process designed to expedite resolution of the order that Uniden pay GME’s costs of the proceeding.

At the parties’ request, Burley J allowed them 14 days to negotiate the quantum of costs payable by Uniden to GME. If they were unable to agree, Burley J ordered that GME should file and serve within a further 14 days a Costs Summary in accordance with the Costs Practice Note (GPN-Costs). Uniden would then have a further 14 days to file and serve a costs response. If the parties were still unable to agree within 14 days of that service, then a Registrar was directed to determine the quantum including, if thought appropriate, on the papers.

A check on Federal Law Search shows the proceeding as “closed”.

GME Pty Ltd v Uniden Australia Pty Ltd [2022] FCA 520


  1. There was a statement of newness and distinctiveness here: “Newness and distinctiveness is claimed in the features of shape and/or configuration of a microphone as illustrated in the accompanying representations.”  ?

Innovation Patents: what to do?

ACIP has released an options paper on what to do about the innovation patent system.

An innovation patent is a uniquely Australian contribution towards encouraging innovation. You can get one (if you apply for it) for pretty much anything[1] unless it differs from the prior art only in ways that “make no substantial contribution to the working of the [ahem] invention” as explained by the Full Court in the Delnorth case.

As recounted in the options paper, the basic objective of the innovation patent system is to encourage and promote investment in innovation by Australian (especially) SMEs.

The options paper is full of interesting statistics and there is an accompanying economics paper, the Verve report attempting to get some empirical data. For example, only about 25% of innovation patents ever get certified. Also, more than 50% of innovation patents are allowed to lapse by the end of their third year. The proportion of innovation patents granted to foreigners is 35% and rising.

Insofar as the options paper takes a position, it would seem that there is pretty much universal agreement that the level of innovation required to get an innovation patent is too low.

The options paper also appears to discern evidence that innovation patents are being used “strategically” or “tactically”, at least by some applicants.

ACIP is now seeking your views on what to do.

ACIP itself identifies 3 broad options:

(1) do nothing (option A);

(2) abolish the innovation patent system (option B); or

(3) change the innovation patent system (option C).

Option A: do nothing

ACIP notes that it is too soon to tell how the Raising the Bar reforms will affect those seeking innovation patents. Those changes do nothing, of course, to the level of “innovative step”.

The Verve report received 517 responses to its survey of the 3,195 Australian inventors who have taken out innovation patents to protect their “inventions”. Bearing in mind that these are the people that the innovation patent system is supposed to be encouraging, ACIP notes:

The Verve survey has shown that individuals and SME user-groups appear to be generally satisfied with the innovation patent system—albeit this survey occurring prior to the full impacts of the Raising the Bar Act being felt by users of the system.

The biggest problem with this do nothing option, however, is that it doesn’t do anything to address the apparently widely recognised issue that the innovation threshold is too low.

As ACIP notes, letting people get an innovation patent in Australia for something which is not patentable anywhere else does nothing to encourage Australian businesses to compete overseas. It should also be borne in mind that an innovation patent over something will probably have the effect of meaning its price will be higher than it would otherwise have been.

Option B: abolish the innovation patent system

There is a nice catalogue of what one might think were compelling reasons why this is a good option. There is also a summary of arguments against it.

This (or a variation on it) is widely perceived to be the option proposed late last year by IP Australia. The options paper indicates that the majority of non-confidential submissions to IP Australia and to ACIP didn’t support IP Australia’s proposal.

The options paper also includes a curious page suggesting that the designs registration system could be amended to permit the registration of functional designs. I (perhaps mistakenly) had thought the Franki Committee’s recommendations were implemented by the Designs Amendment Act 1981 s 11 (inserting new s 18) and s 5 (inserting a new definition of ‘design’) and find their current embodiment in s 7(2) of the Designs Act 2003. The “problem”, if it be a problem, with designs registration is that it protects only the visual appearance of a product, not its function. The new Act doesn’t seem to be any different in that respect to the old Act and it was plainly a deliberate policy choice.[2]

Option C: change the innovation patent system

The problem here, at least insofar as the level of innovation is concerned, is what should that new level be and how on earth would the Courts ever work it out. ACIP plainly didn’t like the suggestions of the Law Council, IPTA or FICPI on this front.

The options paper also raises for further consideration changing or limiting the remedies: no injunction or no interlocutory injunctions, but continued exposure to pay damages or account for profits; limiting the ability to recover pecuniary remedies to the period after certification. Oh dear!

ACIP would like to hear your views by 4 October 2013. It is also planning to hold workshops for public consultation during September.

Options Paper here (pdf)

Verve report here


  1. Patents Act 1990 s 18(2) and (3) exclude some things from patentable subject matter and, apart from the level of innovation prescribed in s 7(4), there are a few other largely technical requirements to satisfy too.  ?
  2. See e.g. recommendations 24, 25 and 26 of the ALRC’s Designs report. Of course, the limitation of the designs registration system to visual appearance only seemed to be one of the main complaints about the system identified by the ALRC: see e.g. 2.44 of the ALRC’s report and 3.49 and 6.5.  ?