Anybody who conceives of a new shape or appearance for an article, may be able to protect that design by means of a registered design. Such a registration under the
Designs Act protects the appearance or form of an article rather than any underlying principle which that article may embody. The registration of a design also grants to the proprietor of the design the right to prevent others copying.
Prior to 1 May 1995, the law of registered designs in South Africa was regulated by the Designs Act 57 of 1967 (the "old Act") which has been repealed and replaced by the Designs Act 195 of 1993 (the "new Act").
What is the difference between aesthetic and functional designs?
Under the old Act, only so-called "aesthetic" designs could be registered. Purely functional designs were not eligible for registration. However, the new Act provides protection for both "aesthetic" and "functional" designs. Generally speaking, aesthetic designs relate to the appearance or eye appeal of an article. Features which are necessitated by the function of an article may be registrable as "functional designs".
In order to prevent undesired monopolistic practices the new Act specifically excludes "spare parts" from protection. However, the prohibition against the registration of design features of spare parts as functional designs does not preclude the valid registration of appropriate design features as aesthetic designs in respect of those features of the spare parts which appeal to the eye.
Requirements for a design to be registrable
In order to be registrable, a design, whether aesthetic or functional, must be new or novel. In the case of a functional design, a further requirement is that the design should not be "commonplace". By including this further requirement the intention of the legislature was presumably to exclude everyday and obvious variants of known designs.
A design is deemed to be new if it is different from or does not form part of the "state of the art". The "state of the art" comprises all matter which has been made available to the public, in South Africa or elsewhere, by written description, by use or in any other way. It also includes matter contained in earlier applications for design registrations. The novelty requirement is akin to the absolute novelty requirement for the valid registration of a patent, but with one important difference. The new Act incorporates the concept of a "release date", being the date on which the design was first made available to the public with the consent of the design proprietor or any predecessor in title.
A design will still be deemed to be new if an application for registration is made within six months of the release date. The effect of this is that the design proprietor is free to disclose his design publicly, for instance by sale of articles embodying the design, for up to six months prior to making an application for registration.
The new Act provides that designs for articles which are not intended to be multiplied by an industrial process are not registrable at all, either as aesthetic or functional designs. From this provision, it can be inferred that it is only the design of an article which is to be mass-produced in quantity that is registrable, and that designs applied individually to hand-made products cannot be protected by registration.
According to the new Act, the designs register is divided into two parts - part A for aesthetic designs and part F for functional designs. The same design, assuming it has both aesthetic and functional features, can be registered in both part A and part F on the register.
Who can apply for design registration?
Only the "proprietor" of a design is entitled to apply for registration.
The "proprietor" of a design may be either the author (i.e. creator of the design), a person for whom a design is created in terms of an agreement, or a person to whom ownership of the design has passed from an earlier proprietor.
How long does a registered design remain in force?
An aesthetic design registration has a duration of fifteen years and a functional design has a duration of ten years from the date of application or release date, subject to the payment of annual renewal fees.
Classification of designs and infringement
Designs are registered by class in accordance with the International Classification for Industrial Designs. For the duration of the registration, the proprietor has the right to exclude all other persons from making, importing, using or disposing of articles which are included in the class in which the design is registered and which embody the registered design or a design not substantially different from the registered design. Since infringement of a registered design can only take place in the class in which a design is registered, correct classification is therefore of critical importance.
The question of whether a competing product infringes a design registration is largely one of visual comparison of the allegedly infringing product with the registered design.
Infringement proceedings are conducted in the division of the High Court having jurisdiction and the court is empowered to grant, by way of relief, an interdict, damages or, in lieu of damages, a reasonable royalty, and delivery up of infringing articles, as well as litigation costs.
Foreign design applications
In most cases, an application for registration of a design will initially be filed in the home country of the proprietor.
If that country is a "convention" country - i.e. a country which is a party to the Paris Convention for the Protection of Industrial Property - the proprietor can then, within six months of his home country filing date, file a corresponding application for registration in any other convention country, claiming the date of original filing as a priority date. South Africa is a member of the Paris Convention.
While registered design rights tend to be rather narrow in scope, protecting as they do a specific form or appearance rather than any broad, underlying principle, they can in appropriate cases provide strong protection against blatant copying and prevent competitors from unfairly using the fruits of your design efforts.
The mere existence of a registration may well dissuade the would-be competitor from competing at all. In addition, since design registrations are granted with minimal delay, it is often wise to file an application for design registration in conjunction with an application for patent protection if it is anticipated that copying of a product is likely to take place soon after launch of the product into the market.