The Designs Act (195/1993) gives the proprietor of a registered design control over their design for a limited period in South Africa. This control is not aimed at protecting an underlying concept, but rather at the appearance of a product embodying the design.
What rights do proprietors of registered designs have?
Proprietors of registered designs can exclude others from:
- making, importing, using or disposing of any article that is 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 in South Africa.
Thus, the proprietor has control over the design, which enables them to have and enjoy the profit and advantage accruing as a result of the design's registration.
A design registration is an asset that can be bought or sold, or in respect of which licences may be granted.
The proprietor of a design registration can institute legal proceedings against an infringer for an interdict:
- to prevent further infringement of the registration;
- to surrender any infringing product; and
- for damages suffered by the proprietor as a result of infringement.
Difference between aesthetic designs and functional designs
An aesthetic design involves the pattern, shape, configuration or ornamentation applied to an article, having features that appeal to, and are judged solely by, the eye. It does not have to be subjectively appealing to qualify for protection as an aesthetic design.
On the other hand, a functional design involves the pattern, shape or configuration of an article, having features that are necessitated by the article's function – for example:
- an integrated circuit topography;
- a mask work; and
- a series of mask works.
How long do design registrations last?
An aesthetic design registration lasts for 15 years, while a functional design lasts for 10 years. This period is calculated from the application or release date, whichever is earlier (see "Registrability requirements" below). This duration is subject to the payment of annual renewal fees.
Can patent applications and registered design applications both be filed?
The scope of protection provided by a patent and registered design is somewhat different, although many articles may qualify for both forms of protection. Where an article qualifies for design protection, the design is registrable, irrespective of whether the article is the subject of a patent application.
Is design protection worth the cost?
Design protection relates specifically to the pattern, shape, configuration or ornamentation of an article. In short, the protection relates specifically to the article's appearance. While in some cases, this kind of protection is extremely valuable, in others, the design of an article can easily be changed, resulting in the circumvention of design protection.
The cost of filing a registered design application is lower than a patent application and the procedure is somewhat simpler, resulting in further cost savings when compared to a patent application.
Further, on registration, a design is deemed to have been registered from the application date. This is in contrast to a patent application, which is typically granted only several months or even years from the application date.
In general, an aesthetic design is registrable if it is new and original. A functional design is registrable if it is new and not commonplace in the art in question.
A design is new if it is different from the state of the art immediately before the application date or the release date, whichever is earlier. The release date is the date on which the design is first made available to the public.
Most design applications are filed before the release date; however, if a design has been made available to the public, the application must be filed within six months of the release date. There is an exception to this rule in the case of integrated circuit typographies and mask works, for which the application must be filed within two years of the release date.
The state of the art includes all matter made available to the public anywhere in the world, by written description, use or in any other way, as well as matter contained in prior design applications.
The essence of the requirements that an aesthetic design be original and a functional design not be commonplace in the art in question is to ensure that the design is distinctive in some way when viewed against the state of the art.
Which designs cannot be protected?
The following are specifically excluded from protection under the Designs Act:
- designs of articles which are not intended to be multiplied by an industrial process;
- aesthetic design protection for any feature of an article insofar as it is necessitated solely by the function which the article is intended to perform or for a method or principle of construction; and
- functional design protection for an article which is in the nature of a spare part of a machine, vehicle or equipment.
Who can apply for design registration?
The Designs Act states that a design's proprietor may apply for the registration thereof. Although the term 'proprietor' is defined in the act, the definition is somewhat unclear. That said, broadly speaking, the following categories of person would be considered the proprietor of a design:
- the author of the design;
- where the design is executed for another person, that other person; or
- a person acquiring rights in the design from a previous proprietor of that design.
Considering the lack of certainty arising from the Design Act's definition of 'proprietor', it is always advisable to address the ownership of designs in agreements relating to the procurement of design services – particularly in employment contracts.
On what grounds can design registrations be revoked?
Design registrations may be revoked by a court if a party makes an application based on the various grounds set out in the Designs Act. While it is not within the scope of this article to deal with revocation in detail, broadly speaking, the grounds can be categorised as substantive and formal.
Formal grounds relate to procedural flaws in the registration application while substantive grounds relate to the registrability of the design registration's subject matter.
To reduce any risk of revocation of a design registration, it is essential that a design registration applicant correctly and fully discloses to their patent attorney all of the information relating to the design – particularly the basis on which the applicant claims their rights in the design.
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