registered designs

Matters relating to registered designs in South Africa are governed by the Designs Act 195 of 1993.

A registered design is generally used to protect the appearance of an article. This may be contrasted with a patent, which may protect the functional aspects of an invention or methods of construction or of production. However, in the case of a functional design, the design may have features, which are necessitated by the function which the article, to which the design is applied, is to perform. Thus, there may be some overlap between the protection afforded by a registered design and that afforded by a patent. Registered designs and patents are not mutually exclusive and, where appropriate, a registered design and a patent may be registered for the same article.

A registered design may protect a two-dimensional design, such as that applied to a textile, for example. In such a case, design protection may overlap with the protection afforded by copyright in the artistic work comprising the design.

Where a design is applied to a container, the protection afforded by the registered design may overlap with the protection available under the Trade Marks Act 194 of 1993, which permits the registration of a trade mark for a container for goods.

Typical examples of designs, which are routinely registered in South Africa, include those for containers such as bottles, frames for sunglasses, motor vehicle body panels and even entire motorcars.

types of designs?

Under the Designs Act, a design may be either aesthetic or functional.

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 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.

A functional design is defined as 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, and includes an integrated circuit topography, a mask work and a series of mask works.

Accordingly, the register of designs is divided into two parts: Part A, in which are recorded aesthetic designs; and Part F, in which are recorded functional designs. Both aesthetic and functional design applications may be filed for the same design.

A single application may be made for a set of articles, i.e. a number of articles of the same general character, which are ordinarily on sale together or intended to be used together, and in respect of which the same design, or the same design with modifications or variations not sufficient to alter the character of the articles or substantially affect the identity thereof, is applied to each separate article.

the applicant for a registered design

requirements for registrability

In order to be registrable, an aesthetic design must be new and original. A functional design must be new and not commonplace in the art in question.

A design is deemed to be new if it does not form part of the state of the art immediately before the date of application for registration or the release date; whichever is the earlier: provided that where the release date is earlier, the design shall not be deemed to be new if the application for the registration of such design has not been lodged within six months of the release date (two years in the case of an integrated topography, a mask work or a series of masks works).

The state of the art comprises all matter which has been made available to the public (whether in the Republic or elsewhere) by written description, by use or in any other way. Also included in the state of the art is all matter contained in an application for the registration of a design in the Republic or in a Convention country, which has subsequently been registered in the Republic.

restrictions on registrability

Designs for articles for which are not intended to be multiplied by an industrial process are not registrable under the Act.

Further, no feature of an article, insofar as it is necessitated solely by the function that the article is intended to perform, or method or principle of construction, shall afford the registered proprietor of an aesthetic design any rights in respect of such feature, method or principle.

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 article shall afford the registered proprietor of a functional design applied to any one of the articles in question any rights respect of such features.

release date

The release date means the date on which the design was first made available to the public, whether in the Republic or elsewhere, with the consent of the proprietor or any predecessor in title. Thus, unlike a patent application, an application for a registered design may still be filed after the design has been made available to the public, provided the filing takes place within six months of the release date (two years in the case of an integrated topography, a mask work or a series of masks works).

However, there are limitations on the enforceability of design rights against a person who commences performing any act of infringement before the date of registration of the design. Thus, a registered design will not be enforceable against a person who copies the design after the release date, but before the date of the application for registration of the design. Also, where the design is released before the application date, it may not be possible to obtain valid design protection for the design in the majority of foreign states. Accordingly, where possible, it is advisable to file an application for a registered design before the design is made available to the public.

effect of registration of design

The effect of registration of a design is to grant the registered proprietor in the Republic, for the duration of the registration, the right to exclude other persons 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.

duration of registration

The term of an aesthetic design is 15 years. The term of a functional design is 10 years. The term of a registered design commences on the date of registration (filing date) or the release date, whichever is earlier. Renewal fees are payable on the third anniversary of this date and annually thereafter.

classification of designs

The register of designs is divided into different classes of goods. A registered design affords protection only in the class in which it is registered. It is possible to register the same design in more than one class. The classification of goods is set out at the end of this document and conforms to the Locarno classification.

requirements for filing

In addition to the relevant official forms required, seven representations of each view of the design are required. Representations may be either drawings or photographs. Where a design consists of a repeating surface pattern, each representation of a design must show the complete pattern and a sufficient portion of the repeat to disclose the design adequately.

A definitive statement setting out the features of the design, for which protection is claimed, is required. The definitive statement shall be used to interpret the scope of protection afforded by the design registration.

A brief statement of not more than 150 words of the features of the design is required for publication. The brief statement shall not be used to interpret the scope of the definitive statement.

Except in the case of a functional design for an integrated circuit topography or a mask work or a series of mask works, an explanatory statement is optional. When used, the explanatory statement may refer to features of the article, including the function or the method or principle of construction of the article. The explanatory statement may be used to assist in interpreting the scope of protection afforded by the design registration.

In order to complete the application for a registered design, the following information is also required:

• the full names and addresses of the applicant;
• the release date, if any;
• the article to which the design is applied;
• the class of the design;
• the publication figure, i.e. the view to be used for the publication.

Bowman Gilfillan can assist with the designation of the article, classification and choice of publication drawing. Consult us with your queries in regard to registering designs in South Africa and internationally.

foreign design protection

South Africa is a member of the Paris Convention. The Convention confers on an applicant for a registered design in a member state the right to file corresponding applications in any other member state within six months of the filing of the first registered design application. This period is not extendable.

Most major industrial countries are members of the Paris Convention. These countries are referred to as Convention countries. Notable exceptions are Taiwan and a number of South and Central American Countries. A full list of Paris Convention member states may be obtained from our offices on request. We will also be pleased to provide detailed advice on the filing of foreign design applications.

cautionary note

The filing of a design application is not the only means of protecting intellectual property. Other forms of protection that are available include registered designs, trade marks, plant breeders' rights and copyright These may exist in addition to, or in place of, registered design rights. Intellectual property rights may also be protected under the common law. Contact Bowman Gilfillan and we will be pleased to advise you in respect of these forms of protection.

classification of goods

Class 1:         Foodstuffs
Class 2:         Articles of clothing and haberdashery
Class 3:         Travel goods, cases, parasols and personal belongings not elsewhere specified
Class 4:         Brushware
Class 5:         Textile piecegood articles, artificial and natural sheet material
Class 6:         Furnishing
Class 7:         Household goods not elsewhere specified
Class 8:         Tools and hardware
Class 9:         Packages and containers for the transport or handling of goods
Class 10:       Clocks, watches and other measuring instruments, checking and          signalling instruments
Class 11:       Articles of adornment
Class 12:       Means of transport or hoisting
Class 13:       Equipment for production, distribution or transformation of electricity
Class 14:       Recording, communication or information retrieval equipment
Class 15:       Machines not elsewhere specified
Class 16:       Photographic, cinematographic and optical apparatuses
Class 17:       Musical instruments
Class 18:       Printing and office machinery
Class 19:       Stationery and office equipment, artists' and teachers’ materials
Class 20:       Sales and advertising equipment, signs
Class 21:       Games, toys, tents and sports goods
Class 22:       Arms, pyrotechnic articles, articles for hunting, fishing and pest killing
Class 23:       Fluid distribution equipment, sanitary, heating, ventilation and air-conditioning equipment, solid fuel
Class 24:       Medical and laboratory equipment
Class 25:       Building units and construction elements
Class 26:       Lighting apparatus
Class 27:       Tobacco and smokers' supplies
Class 28:       Pharmaceutical and cosmetic products, toilet articles and apparatuses
Class 29:       Devices and equipment against fire hazards for accident prevention and for rescue
Class 30:       Articles for the care and handling of animals
Class 31:       Machines and appliances for preparing food or drink not elsewhere specified.
Class 99:       Miscellaneous.

disclaimer

The information provided in this brochure is, by its nature, brief and incomplete and is not meant as a substitute for detailed legal advice. Bowman Gilfillan Inc. shall not be liable for any loss resulting from the use of the information provided herein. We urge you to consult us with your specific queries in regard to any intellectual property matters.