Registered Designs

A registered design protects the appearance of an article.  A third party will not be allowed to use, make, offer for sale, sell or import an article that is identical to a registered design or that is not substantially different from the registered design.  The scope of “substantially different” is determined by comparing the allegedly infringing article to the registered design and to the prior art.  This is an “eye” test.  If the allegedly infringing article appears more like the registered design than the prior art, infringement is present.  If it appears more like the prior art, there is no infringement.

In South Africa, one can file and protect both aesthetic and functional registered designs for slightly different protection as follows:

In the case of a functional design, filed in class “F”, for the new and uncommon features of an article which features are necessitated by the function which the article is to perform; and

In the case of an aesthetic design, filed in class “A”, for the new and original features of an article, which features appeal to and are judges solely by the eye.

Unlike a patent application, a registered design application for an article need not be filed prior to making the article available to the public.  A registered design application can be filed within 6 months of making the article available to the public.  The date on which the article is made available to the public is referred to as the “release date” and must be disclosed at the time of filing a registered design application (within 6 months of the release date of course!).

We sometimes file both aesthetic and functional design applications for one article. The reason for this is that our courts have not yet clarified the difference sufficiently and there is always an argument that some features, even features dictated by function, have been altered or designed with some sort of aesthetic appeal in mind.   Thus, in many cases, we file two design applications, one aesthetic and one functional, for the same article.

One can also consider filing applications accompanied by line drawings as well as photographs/CAD renderings.   Our courts have sometimes in the past, incorrectly some might say, applied passing-off principles in registered design infringement cases.  Having both photographs and drawings will hopefully assist in such cases.  The line drawings provide a broader scope of design protection and the photographs, more specific protection.  If a court applies passing-off principles in an effort to decide on design infringement, the photographs will assist as, in all likelihood, the infringer’s product will look almost identical or confusingly similar in “real” (photographic) life.

We also include a design statement of features and may include an optional explanatory statement.

At the end of the day, each case must be carefully considered on its own merits.

Foreign design applications have to be filed within six months of filing a registered design in South Africa in order to claim priority from the South African registered design.