IGZ 320 Study Unit 3: Law of Designs
LAW OF DESIGNS
D&D CHAPTER 7 & PAR 9.1-9.3
Source references:
✓ ss 1, 4, 5, 6, 15 & 24 of the Designs Act 195 of 1993;
✓ Homecraft Steel Industries v SM Hare & Son 1984 3 SA 681 (A);
✓ Clipsal Australia (Pty) Ltd v Trust Electrical Wholesalers 2007 BIP 432 (SCA);
✓ Sunsmart Products (Pty) Ltd v Flag and Flagpole Industries 2007 BIP 44 (SCA);
✓ BMW AG v Grandmark International (Pty) Ltd And Another 2014 1 SA 323 (SCA).
THE NATURE OF A REGISTERED DESIGN
• Registered designs can be aesthetic or functional in nature and provide for the
protection of the appearance of an article resulting from a particular design being
applied to the article, whether for an artistic or functional reason
• A registered design is a form of intellectual property and is the mechanism by which
the outward appearance of an article is protected
DESIGNS AND PATENTS
• The difference between designs and patents = patents protect underlying concepts;
whereas registered designs protect appearance
o However, this is an oversimplification
• The same article can often attract both patent and design protection
DESIGNS AND TRADE MARKS
• A trade mark is a mark used or proposed to be used by a person in relation to goods
or services for the purpose of distinguishing those goods/services from the same kind of
goods/services connected in the course of trade with any other person
• Registered designs, whether aesthetic or functional, relate to designs applied to articles
and the purpose is therefore to protect the appearance of the article and not to link
the appearance of the article with the underlying goodwill associated with the supplier
of the article
FEATURE DESIGN TRADE MARK
Duration Limited – 10/15 years Potentially Perpetual
Scope of Protection Protection limited to class, Protection also limited to
but classes are relatively class, but classification is
broad e.g. any bottle will be more specific, e.g. a
protected if filed in class 9, bottle will only be
irrespective of contents protected for specific
contents, e.g. detergent
Time to grant Quick – proceeds to Slower – normally takes
registration and enforceable between 18 and 30
within about 9 months from months to proceed to
filing registration
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Prosecution process Only formal examination. Substantive examination
Simple process, although and provision for 3rd party
validity remains untested opposition
Registrability Must be new Must be distinctive
Novelty Must not have been Can be known to the
disclosed to the public public
Use requirement No use requirement Use requirement
Maintenance Annual maintenance fee Maintenance fee only
payable after 3rd year payable every 10 years
These two forms of protection should not be seen as mutually exclusive, but rather as mutually
supportive.
DESIGNS AND COPYRIGHT
• Registered designs ≠ concerned with underlying concepts, but rather with the physical
embodiments of such concepts (similar to copyright which does not protect ideas, but
the reduction of those ideas to material form)
• Section 15(3A) of the Copyright Act introduces a limitation → protection will not extend
to the reproduction of a 3D article which has been made available to the public,
provided that:
o the 3D article is of a utilitarian nature, and
o is multiplied in an industrial process
• Therefore, copyright will subsist in the technical drawings and in artistic concept
models, however protection will not extend to an actual 3D production model due to
the above limitation
o The 3D production model would however be protectable by way of a registered
(aesthetic) design
o Solution = Law of Designs
GIVE A CURSORY SUMMARY OF THE HISTORICAL BACKGROUND OF THE DESIGNS
ACT
• The Law of Designs Act 195 of 1993 came into force on 1 May 1995
o Proceedings under the Act are governed by the Design Regulations, 1999
o The Act was amended by the Intellectual Property Laws Amendment Act 28 of
2013, which introduced traditional design
o The Act also complies with the Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS Agreement)
• SA is party to the Paris Convention for the Protection of Industrial Property (the Paris
Convention)
o SA ≠ a party to the Hague Agreement Concerning the International Deposit of
Industrial Designs, and protection can therefore not be obtained in SA
o SA has also not signed the Locarno Agreement Establishing an International
Classification for Industrial Designs, but has adopted the Locarno classification
system
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GIVE THE DEFINITION OF A DESIGN
• SA design law provides for the registration of both aesthetic (Part A registration) and
functional designs (Part F registration)
o The functional design is a unique South African creation
• “Design” means an aesthetic design or a functional design:
o Aesthetic design → design applied to an article which has features that
appeal to and are judged solely by the eye irrespective of the aesthetic
quality thereof – i.e. features that persuade a purchaser to select it over
another article that performs the same function, but has a different
appearance
▪ The fact that an article performs a particular function ≠ mean that
the design should be a functional design rather than an
aesthetic design
• E.g. every water drink bottle has a function – to hold water.
However, various designs exist for bottles that all essentially
fulfil the same function
o The aim of the different designs is therefore clearly to
appeal to the eye and are as such protectable as
aesthetic designs
o Functional design → Only if the article has to look a
certain way in order to perform its function will it be the subject of a
functional design
▪ A functional design is a design applied to an article 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 masks
• An aesthetic design registration affords the rights holder no rights in the purely
functional features of an article embodying the registered design, or in its method
of construction
o If it is important that a functional feature of an article should also be
protected, it will be necessary to file applications for design protection in
both Part A and Part F of the designs register
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, IGZ 320 Study Unit 3: Law of Designs
EXPLAIN AND INDICATE THE MEANING AND DISTINCTION BETWEEN AN "AESTHETIC
DESIGN" AND A "FUNCTIONAL DESIGN"
AESTHETIC DESIGN FUNCTIONAL DESIGN
Means any design applied to any article, Means any design applied to any article,
whether for the pattern or the shape or the whether for the pattern or the shape or the
configuration or the ornamentation thereof, configuration thereof, or for any two or more
or for any two or more of those purposes, of those purposes, and by whatever means
and by whatever means it is applied, it is applied, having features which are
having features which appeal to and are necessitated by the function which
judged solely by the eye, irrespective of the the article to which the design is applied, is
aesthetic quality thereof to perform, and includes an integrated
Certain aesthetic→ designs have aesthetic circuit topography, a mask work and a
designs/qualities series of mask works
Cannot refer to an ornamentation as that is
a reference to an aesthetic design
Its appearance should be necessitated by
its function
• “Article” means any article of manufacture and includes a part of such article if
manufactured separately
o ‘design’ and ‘article’ ≠ synonymous – a design is something that is applied
to an article e.g. ornamentation in the form of a pattern of flowers (the
design) which is applied to crockery (the article) or a conical shape (the
design) which is applied to a bottle (the article)
• Ito section 20(1) of the Act → the effect of registration of a design is to grant to the
registered proprietor the right to exclude other persons from the 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
• Section 14(5) of the Act → No feature of an article in so far as it is necessitated solely
by the function which the article is to perform shall afford the registered proprietor
of an aesthetic design any rights ito the Act iro such feature
ARTICLES
• “Article” means any article of manufacture and includes a part of such article if
manufactured separately
• Parts of a composite article also form part of the article as a whole
o E.g. a hammer – which comprises of a forged steel head and a separately
manufactured wooden handle. Both the head and the handle form part of
the hammer and ∴ the hammer is the article and includes the handle even
if it is manufactured separately. However, the part of the article that is
manufactured separately, i.e. the handle, could also constitute an article
in its own right.
• CAN LOGOS, SYMBOLS AND THE LIKE BE CONSIDERED ARTICLES?
o Ordinary dictionary definition of an article refers to it as ‘a particular object
made or produced in a merely mechanical way’
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▪ Narrow interpretation of this definition: logos, symbols and the like ≠
articles because they are not tangible, material objects
▪ Broad interpretation of this definition: allows for intangible objects
such as logos and symbols to fall within the scope of the Act
• There will only be certainty once our courts have had the
opportunity to consider this issue in more detail
• SETS OF ARTICLES
o A design for a set of articles may be covered in a single design application,
provided that it meets the criteria defined in the Act
▪ What is a set of articles? → A set of articles means any number of
articles of the same general character that are ordinarily sold
together or intended to be used together, and in respect of which
the same design is applied to each article
▪ The applied design need not be identical, as long as variations and
modifications of the design applied to the different articles are not
sufficient to alter the character of the articles or substantially alter
their identity
▪ Examples of sets of articles include a set of crockery which share the
same pattern/ornamentation or a set of cutlery which all have
handles that embody the same new shape
o The mere fact that different articles are generally sold together and used
together ≠ mean that the articles qualify as a set of articles and would
thus require filing of separate applications
CLIPSAL AUSTRALIA (PTY) LTD V TRUST ELECTRICAL WHOLESALERS 200 7 BIP 432
(SCA)
• The court held that once the registrar has registered articles as a set when they in
truth do not form a set, it is at best a matter for review but it cannot be raised as a
defence to infringement or be a ground for revocation
• In addition, the court also held that, once registered, each member of a set has its
own individuality and must be assessed on its own
• Upon registration it is therefore as if each member of a set becomes the subject of
a design in its own right, and the fact that registration is for a set of articles cannot
be used as an interpretative tool for determining the scope of protection of the
individual articles making up the set
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