Roger that! Australian Federal Court decision a timely reminder of the value of design rights

By Shaun McVicar, Tim Gollan and Briellen Sands

Litigation over designs is relatively uncommon in Australia.

Nevertheless, the designs scheme can be effectively utilised by designers to enforce their monopoly rights against competitors who wish to enter the market. A recent Federal Court decision regarding the infringement of a registered design for a microphone handset for a mobile radio product demonstrates that designs can be valuable intellectual property assets and provides useful guidance to designers and manufacturers as to the how the Court approaches the question of assessing design infringement.

Key Takeaways

• The value of registered designs. Registered designs can be effectively used to enforce commercial interests. The injunction granted by the Court restrains Uniden from entering the Australian market with its XTRAK product while the GME design remains registered. This case serves as a reminder to designers and manufacturers as to the importance of registered design rights.
• Assessing infringement of registered designs. In determining infringement, in addition to noting the similarities and differences between the designs in question, the Court will consider the state of development of relevant prior art designs and the freedom of the creator to innovate having regard to any functional limitations which may exist. The Court will undertake this assessment by standing in the shoes of the “informed user” who is a notional person taken to be familiar with products embodying the designs in question.
• Efficiency of intellectual property litigation. This case was filed and heard with a judgment issued within two months. It demonstrates that in appropriate cases, and where the parties are able to cooperate to narrow the scope of issues in contest, the Court is able to move quickly to finally determine intellectual property proceedings.

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