REGISTERED DESIGNS

1.         What is a Registered Design?

A registered design is a statutory monopoly granted by the Designs Office on behalf of the state which allows the proprietor of the registered design to stop others from exploiting the specific appearance of an article for a limited period of time.  A design registration protects the physical appearance of an article and, unlike a patent, does not extend to the underlying principle of how the article functions.

The rights conferred by a design registration are governed by the South African Designs Act 195 of 1993 (“the Designs Act”).  In terms of the Designs Act, the protection afforded by a registered design relates to a design as applied to an article.

An article means an article of manufacture and includes a part of such article if manufactured separately, as well as a set of articles.  In terms of the Designs Act, a set of articles includes a number of articles of the same general character which are ordinarily on sale together or are intended to be used together and in respect of which the same design, or the design with modifications not sufficient to change the character of the articles is applied to each separate article.

Only articles which are intended to be multiplied by an industrial process may qualify as articles for the purposes of a design registration, and handcrafted articles or works of art generally are excluded from design protection.

2.         Types of Designs

There are two types of designs that may be registered: (1) an aesthetic design, and (2) a functional design.  An application for both an aesthetic design and a functional design may be lodged in respect of the same article.

2.1       Aesthetic Designs

An aesthetic design means 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 those purposes, and by whatever means it is applied, having features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof.

Any feature of an article in so far as it is necessitated solely by the function which the article is intended to perform, or any method or principle of construction, shall not afford the proprietor of an aesthetic design any rights in respect of such feature, method or principle.  A feature of an article is necessitated by function if it is not there to appeal to the eye but is necessary to make an article work.

2.2       Functional Designs

A functional design means any design applied to any article, whether for the pattern or the shape or the configuration thereof, or for any two or more of those 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.

In contrast with aesthetic designs, only features of shape, configuration and/or pattern may be protected by a functional design registration, and ornamentation is specifically excluded from functional design protection.

Furthermore, the Designs Act states that in the case of an article which is in the nature of a spare part for a machine, vehicle or equipment, no feature of pattern, shape or configuration of such an article shall provide any design rights to the registered proprietor of a functional design.

3.         Requirements for a Design

In order to qualify for valid design protection, the Designs Act requires that an aesthetic design should be new and original while a functional design should be new and not commonplace in the art in question.

A design is deemed to be new if is different from or does not form part of the state of the art immediately before the date of filing of an application for a registered design.  The state of the art includes all matter which has been made available to the public in any manner in South Africa or any other country.  However, in terms of the Designs Act, where a design has previously been disclosed with the consent of the proprietor, valid design protection may be obtained if a design application is filed within six months from the date of such disclosure (“the release date”).  The release date must be declared in the application documents when the design application is filed.

An aesthetic design is deemed to be “original” if the design is the product of the author’s own creativity and was not copied from another source.  On the other hand, the requirement for a functional design to be “not common place” in the art in question implies that a functional design should not be a trivial alteration to an existing design when viewed through the eyes of a person skilled in the field of articles to which the design is applied.

4.         Who may Apply for a Design?

Only the proprietor of a design may apply for the registration of the design.  In terms of the Designs Act, the proprietor of a design is:

(i)                  the author (creator) of the design;

(ii)                the person for whom the author has made the design in terms of an agreement;

(iii)               the employer of an employee who in the course of his employment makes the design; or

(iv)              the person to whom the ownership of the design has passed, for example by way of an assignment from the author.

5.         Registration of a Design

Design applications are not examined on the merits, and provided that the formal requirements are met, a design application will proceed to registration.

After publication of a notice of registration in the Patent Journal, the Registrar of Designs issues a Certificate of Registration to the proprietor of the registered design.

Once a design has been registered, all documents lodged at the Designs Office in support of the application for the design registration fall open to public inspection and third parties may then obtain copies of any of these documents.

6.         Rights Afforded by a Design

The effect of a registered design is to grant the registered proprietor, for the duration of the registration, the right in South Africa to exclude other parties from making, importing, using or disposing of any article included in the class in which the design is registered and embodying the registered design or a design not substantially different from the registered design such that he shall have and enjoy the whole profit and advantage accruing by reason of the registration.

Once an article embodying a registered design has been disposed of by or on behalf of the proprietor or his licensee, the purchaser has the right to use the article and to dispose of the article.

7.         Infringement of a Design

A proprietor of a registered design may prevent others from exploiting the design only if an alleged infringing design is applied to an article included in the class in which the design is registered.  Proper classification is thus crucial for the enforcement of a design registration against third parties.

Once it has been established that an alleged infringing design is applied to an article included in the class in which a valid design has been registered, it is necessary to consider whether or not the alleged infringing design falls within the scope of protection of the registered design.

In determining the scope of protection, it is necessary to consider the definitive statement of the design registration.  The definitive statement sets out the nature of the protection sought and may relate to an article as a whole or to particular aspects of an article.  If the definitive statement relates to the article as a whole, then the scope of protection is decided by considering the article as a whole, whereas if the definitive statement relates to a portion only of the article, then the scope of protection is decided by considering only that portion of the article.

Having determined that the design relates to an article as a whole or to a portion only of the article, it is necessary to compare the alleged infringing design with the design registration.  The test for infringement is whether the article alleged to infringe embodies the registered design or a design not substantially different from the registered design.  The two designs must be viewed and compared for substantial differences.  In determining whether or not a difference is substantial, other designs available to the public prior to the date of application or the release date of the registered design (“prior art”) must be considered.  If only small differences separate the registered design from the prior art, then relatively small differences between the alleged infringement and the registered design will be sufficient to avoid infringement.  On the other hand, a registered design which is substantially different from the prior art will have a relatively broad scope of protection.

8.         Remedies for Infringement

A plaintiff in proceedings for infringement of a registered design shall be entitled to relief by way of:

(i)         an interdict;

(ii)        surrender of any infringing product or any article or product of which the infringing product forms an inseparable part;

(iii)       damages;

(iv)       in lieu of damages, at the option of the plaintiff, an amount calculated on the basis of a reasonable royalty which would have been payable by a licensee or sub-licensee in respect of the registered design concerned.

9.         Revocation of a Design

Any person may at any time apply to the court for the revocation of a design registration on one or more of the following grounds:

(i)                  that the application for the registration of the design was not made by a person entitled thereto;

(ii)                that the registration of the design is in fraud of rights of the applicant for revocation;

(iii)               that the design in question is not registrable;

(iv)              that the application for the registration of the design contains a false statement or representation which is material and which the registered proprietor knew was false at the time when the statement or representation was made; or

(v)                that the application for the registration of the design was not made in the prescribed manner.  

10.      Licensing and Transfer of Ownership

As is the case with other intellectual property rights, a registered design may be licensed to a third party.

Generally, a licensee is authorised to perform acts that would otherwise constitute infringement of the design registration, and in return the design proprietor, as licensor, receives royalties.

A registered design may also be transferred or assigned from the proprietor to a third party.  In order to be valid, an assignment must be in writing, and in order to be effective against third parties an assignment must be recorded at the Designs Office.

11.      Priority Claim

South Africa is a member of the Convention of Paris for the Protection of Industrial Property (the Paris Convention).  As such, an applicant of an earlier application in another Convention country may file a South African design application within six months of the earlier application and claim priority from the earlier application.

12.      Duration of a Design

A registered design affords a monopoly for a limited period of time, after which third parties may copy the design provided that no other intellectual property rights subsist in the design.

In the case of an aesthetic design, the monopoly is granted for a period of fifteen years from the date of filing at the Designs Office, and in the case of a functional design the monopoly is granted for a period of ten years from the date of filing at the Designs Office.

If a registered design has a release date, the term of protection will be calculated from the release date, and if a registered design claims priority from a design application filed in a Convention country, the term of protection will be calculated from the date of the filing of the priority application in the Convention country.

Renewal fees become payable three years after the filing of an application for a design registration and are payable annually thereafter.  In the case of a registered design having a release date or claiming a priority date, the renewal fees become payable three years after the release date or the priority date, respectively, and are payable annually thereafter.  A grace period of six months is allowed for late payment of a renewal fee.

13.       Restoration of a Lapsed Design

If a renewal fee is not paid within the stipulated time, the design registration will lapse.  A lapsed design registration may be restored only if: (1) the lapsing of the design registration was unintentional; and (2) there is no undue delay in the making of an application for the restoration of the design registration.