Membership of International Conventions:
- Paris Convention for the Protection of Industrial Property (1883); Stockholm Act as from 1 December 1947.
- Convention on Establishing the World Intellectual Property Organisation (WIPO).
- TRIPS: South African statutory design law is in compliance with the requirements of the TRIPS agreement.
The South African Designs Act No. 195 of 1993 provides for the registration of designs applied to articles intended to be multiplied by industrial processes. In contrast to patent rights which are sought to protect an invention, i.e. the principle underlying a process or product, registered design rights are sought to protect only the physical form of an article of manufacture.
A. Registerable Designs:
- The Designs Act No 195 of 1993 makes provision for the registration of both aesthetic designs (Part A registration) and functional designs (Part F registration).
- An aesthetic design is defined as "any design applied to any article, whether for the pattern or the shape or the configuration or the ornamentation thereof, or for any two or more of these purposes, and by whatever means is applied, having features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof." Design features which are necessitated by the function of the article in question, i.e. purely functional features, cannot validly be registered as aesthetic designs.
- A functional design is defined as "any design applied to any article, either for the pattern or the shape or the configuration thereof, or for any two or more of these purposes, and by whatever means it is applied, having features which are necessitated by the function which the article to which the design is applied, is to perform, and includes an integrated circuit topography, a mask work and a series of mask works."
- Both functional and aesthetic designs applications may be lodged in respect of the same article. It is important to note, however, that an aesthetic design registration affords the proprietor of the registration no rights in respect of the purely functional features of the article which is the subject of the registration, or its method of construction. Thus if it is important that a functional feature of an article also be protected, then it may be necessary to file applications for design protection in both Parts A and F of the designs register.
- "Article" includes any article of manufacture, as well as any part of an article if manufactured separately.
- A design may also be registered in respect of a set of articles of the same general character (which are ordinarily on sale or intended to be used together.)
Generally speaking, seperate applications are required for different designs. However, in the case of a number of articles of the same general character (which are ordinarily on sale together or intended to be used together) and to which the same design (or the same design with modifications or variations not sufficient to alter the character of the articles) is applied, may constitue a "set of articles" and thus be subject of a single design application. An example would be a set of cutlery or a set of tools such as screwdrivers of different size. To qualify as a set, each article in the set must have applied to it the same design, or the same design with modifications or variations not sufficient to alter the charcter or substantially alter the identity thereof.
B. Who may apply:
A person who claims to be the proprietor of a design may apply to register the design. If the application is made by a firm or partnership the full names of all partners must be provided. The proprietor of the design is:
- the author of the design; or
- where the author of the design executes the work for another person, the other person for whom the work is so executed; or
- where a person, or his employee acting in the course and scope of his employment, makes a design for another person in terms of an agreement, such other person; or
- where the ownership in the design has passed to any other person, such other person.
C. Novelty Requirements:
- An aesthetic design must be new and original and a functional design must be new and not commonplace in the art in question. Absolute novelty is required for both kinds of designs, subject to a 6 month period of grace from the "release date", ie. date of first disclosure.
- A design is deemed to be new if it is different from or does not form part of the state of the art immediately before the priority date in the case of a convention application, or the date on which the application is lodged at the South African Designs Office in the case of non-convention application, or the release date, whichever is the earlier. The state of the art includes all matter which has been made available to the public anywhere in the world by written description, by use or in any other way.
- Our courts have interpreted the meaning of "original" as akin to "original"in Copyright law. The design for which protection is claimed must, therefore, not have been copied from the design of an earlier article, and must have been created by the author in order to be protectable under Design law.
D. Designs not registerable:
A design will not be registered in respect of:
- Any article not intended to be multiplied by an industrial process.
- Design features of articles which are in the nature of spare parts for machinery, vehicles or equipment. There is unfortunately no definition in the Designs Act of what constitues a "spare part", nor have our Courts had an opportunity to rule on the matter. One posssible interpretation is that a spare part is a wear part, i.e. one that would be expected to require regular replacement during the lifetime of a machine or piece of equipment, such as a spark plug in the case of an engine. A stricter interpretation is that any replaceable part of a machine or piece of equipment would constitute a spare part, for example, the cylinder head of an engine. (It must be noted that this exclusion does not in any way alter the availability of valid aesthetic design protection for appropriate features of component parts so long as the aesthetic features are sufficiently present and claimed).
- Features necessitated solely by function (aesthetic designs only)
- Method or principle of construction (aesthetic designs only)
E. Priority claims:
Multiple priority claims are allowed.
F. Examination by the Designs Office:
There is no examination as to registerability. The Registrar considers each application, and once he is satisfied that all formal requirements have been met, and if he has no objection to the design being registered, accepts and registers the design and issues the official registration certificate. There is no provision for opposition. When a design is published, it is registered, and the official file becomes open to public inspection. An application must be finalised within 12 months of the date of filing. Errors in the application documents may be corrected upon application.
G. Terms of Design:
The term of the registration of an aesthetic design is fifteen years and that of a functional design is ten years. The commencement of the duration is calculated from the application date or, if claimed, either the priority date or release date. Renewal fees are payable at the expiration of the third year from the application date, and annually thereafter.
- Name and physical address of applicant.
- Article to which design is to be applied (title), e.g. "Bottle".
- Type of Design (Aesthetic or Functional).
- Formal representations* with indication of views.
- Number, date and country of the basic application if Paris Convention priority is to be claimed.
- Statement of features of the design for which protection is sought (novelty statement).
- Declaration and power of attorney (form D3). Six months from filing date).
- Assignment of priority rights, where relevant. (Twelve months from filing date).
- Certified copy of priority application, where relevant. (Six months from filing date).
- Verified English translation of priority application, where relevant. (Six months from filing date).
- International classification (Locarno Agreement).
* Representations: black and white photographs or drawings are acceptable.
Rights granted on registration
Once a design application has proceeded to registration, the proprietor of the design is granted, for the duration of the registration, the exclusive right in South Africa to exclude others from making, importing, using or disposing of any article embodying the registered design (or a design not substantially different from the registered design).
In cases of infringement of a registered design, the proprietor is entitled to the following relief:
- an interdict;
- surrender of any infringing product or any article or product of which the infringing product forms an inseparable part; and
- damages or, in lieu of damages, a reasonable royalty which would have been payable by a licensee in respect of the registered design.
Assignment and licensing:
The proprietor of a design registration may assign or licence his rights in the registration to another person. It is not compulsory to record the assignment or licensing of a design registration at the Designs Office, but there are important advantages in doing so. Most importantly, an assignment which is not recorded has no validity except as between the parties to the assignment.
One possible consequence of this is that a third party who has no knowledge of the assignment can deal with the original proprietor as if that person were still the proprietor. This could be extremely detrimental for the new owner who would only have a contractual claim against the original proprietor. Also, in the case of infringement only the registered proprietor may institute proceedings. Thus, if an assignment is unrecorded, there will be a delay in taking action until such time as the assignment is recorded. Except in very limited circumstances, a licensee may not sue for infringement. Where the proprietor of a design registration institutes infringement proceedings, he is obliged to give notice thereof to all recorded licensees. Any such licensee is then entitled to intervene in the proceedings as a co-plaintiff.