DESIGN PROTECTION IN SOUTH AFRICA
Overview
The South African Designs Act (“the Act”) provides for two types of designs. Firstly,
there is an aesthetic design which is similar to a conventional design available in
most countries and which protects the aesthetic appearance of an article. In terms
of the Act an aesthetic design means “any design applied to any article, whether or
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”.
Examples of articles for which aesthetic design protection may be obtained include
furniture, perfume bottles, wine bottles, clothing designs, textile prints and
automobile body parts. The protection afforded by an aesthetic design does not
extend to design features which are solely functional.
Secondly, it is possible to obtain a functional design. In terms of the Act, a
functional design is “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”. A
functional design therefore also protects the appearance of an article, but the
appearance is dictated by functional considerations.
Examples of articles for which functional design protection may be obtained include
cooking utensils, bottle caps, mascara applicators, hair styling apparatuses, metal
extrusions and tyre treads. A functional design does not afford protection to an
article which is in the nature of a spare part for a vehicle or a machine.
An aesthetic design is registered in Part A of the official register and a functional
design in Part F of the register. In many cases, a specific article has both aesthetic
features and functional features and it is possible to file in both classes for the same
design.Integrated circuits and mask works are protectable as functional designs.
Requirements for the registration of a design
To be registrable, a functional design must be new and not commonplace in the art,
while an aesthetic design must be new and original. In terms of the Act, a design is
registrable if it is different from existing designs available to the public anywhere in
the world.
Release date
The Act provides for a grace period of 6 months. This means that the novelty of
the design application will be assessed at the filing date of the application or the
release date, whichever is the earlier, provided that a design application is filed
within 6 months from the release date.The release date is the date on which the
proprietor has first made the design available to the public (in South Africa or
elsewhere).
Prosecution
Design applications in South Africa do not undergo substantive examination. Once
all the formalities have been complied with, the application is granted. Grant
normally occurs between 7 and 9 months from filing. A power of attorney signed by
the applicant must be filed, and this may be late lodged. An assignment of the
design from the creator to the applicant is not required.
Scope of protection
The scope of protection afforded by a South African design is determined by having
regard to similar principles applied in most other countries. The test for
infringement is “substantial similarity”. A registered design will be infringed if an
article is made that embodies the same design or "a design not substantially
different" from the registered design. If there is a large difference between the
registered design and the state of the art, a competitor will have to make an equally
large change to the registered design to avoid infringement. On the other hand, if a
registered design only differs in minor respects from the prior art, then similar minor
changes would theoretically avoid infringement. The Act also provides for the
inclusion of a "definitive statement". The definitive statement is used to interpret the
scope of the design.
Term
The term of a aesthetic design is 15 years and that of a functional design 10 years.
Costs
The cost of the first design application is € 800 (including the official fee). The cost
of each additional design application filed at the same time is € 400. These costs
include the cost of drafting a definitive statement and claiming priority. There will be
no additional charges for prosecution.
For further information contact Bastiaan Koster at bkoster@vonseidels.com
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