Aesthetic and functional designs are protected in terms of the 1993 Designs Act. This document is not intended to be a full exposition of the law but rather a summary to give basic information to anyone intending to seek protection for the appearance of an article that has been developed.

Please contact us if any topic is of particular concern to you and is not dealt with in sufficient detail to answer your question.

What can be registered?

Two types of design can be registered, namely, aesthetic designs and functional designs.

These are defined as follows:

Aesthetic Designs
This means 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.

Functional Designs
This means 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.

Novelty

For an aesthetic design validly to be registered it must be both new and original. For a functional design validly to be registered it must be new and not commonplace in the art. A design is deemed to be new if it is different from or does not form part of the state of the art.

These definitions are not without difficulty in their interpretation. The prudent approach is to assume that, subject to the release date provisions dealt with in the paragraphs below, a design can only validly be registered if it has not been disclosed in any way, such as in print or by commercial exploitation.

The Applicant

An application for a registered design must be filed by the proprietor.

The proprietor is defined as:
the author of the design; or
where the author of the design executes the work for another person, the other person for whom the work is so executed; or
where a person, or his employee acting in the course of his employment, makes a design for another person in terms of an agreement, such other person; or
where the ownership in the design has passed to any other person, such other person.

These provisions form one of the bars to the registration of a product seen overseas as the person who brings the product back does not qualify as the proprietor of the design.

Release Date Provisions

The Designs Act makes it possible for a valid design registration to be obtained based on a design application filed within six months of the date on which an article is put on the market by the design proprietor.

However, these provisions should not be used except when the product has been placed on the market and only thereafter is a decision made to seek protection. The reason for this is that anyone who copies the product between the release date and the filing date is protected and the design proprietor may not be able to prevent the other party from continuing with commercial exploitation.

Post Filing Information

The Designs Office does not conduct a search or consider the registrability of the subject matter of a design application. It merely examines to ensure that all formalities have been complied with. The procedure from filing to registration is a formal one not involving the merits of the design.

Rights which can be enforced against alleged infringers only arise on registration of the design. Threats of proceedings should not be made on the basis of a pending design application.

Exploitation of the design can commence after an application in respect thereof has been filed subject, of course, to their being no prior rights that are infringed.

A registered design can be revoked at any time on application made to the Court in the prescribed manner.

Whilst it may seem academic it should be noted that obtaining a registered design does not give the proprietor the right to exploit the design. There may be prior rights that are infringed. A valid registration does give the proprietor the right to stop others from exploiting the design.

Subject matter and name searching

Subject matter searches fall into two main categories, that is, novelty searches and infringement searches.

A novelty search, which can be carried out anywhere in the world, is intended to find out whether or not a design which is to be registered is already known. Such a search can also be used to determine if a design registration already issued is valid. Practically only classified literature, which means prior design registrations, can be searched successfully and within a reasonable budget.

The second type of search, which of necessity is carried out where the design is to be exploited, is intended to locate any prior designs that might be infringed by exploitation of the design.

Subject matter searching can be expensive and it is recommended that a search be carried out only when the results have some immediate significance, and not merely for the sake of knowing about prior disclosures. A novelty search would, for example, be recommended before filing an expensive set of foreign design applications and an infringement search before investing large sums in preparing to exploit a design.

A name search determines if a particular party owns any design applications or design registrations.

Effect of Registration

A valid design registration enables the design proprietor to exclude others 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.

Designs in Foreign Countries

South Africa is a member of the International Convention. In practical terms this means that in respect of most countries of the world foreign applications can be filed in the period of six months following filing of the first South African application in respect of the design. The foreign applications are in effect back-dated to the date of filing in South Africa.

This procedure is advantageous for a number of reasons. It enables the applicant to defer for a short period the not insubstantial costs of filing foreign design applications, whilst still giving the applicant a so-called priority date.

Disclosures by the applicant or others of the design which is the subject of the South African application after the South African application has been filed cannot be used for the purpose of refusing a foreign registration or invalidating any foreign registration.

Not all countries are members of the International Convention. Namibia and Taiwan are non-members that may be important to a South African applicant. If protection is required in these countries, or in certain South American countries, applications might have to be filed before the design is disclosed.

A foreign design registration program can be complex and expensive. We suggest that our advice be sought on procedures and costs as soon as a decision to register a design in one or more countries other than South Africa is taken.

Infringement Proceedings

The onus is on a proprietor to enforce its registration against an alleged infringer. Such proceedings are expensive and a proprietor, unless a corporation of considerable size, might well find the costs of such proceedings daunting only a proprietor holding a design registration pertaining to a design which has been a significant commercial success would probably enforce the design registration through an infringement action.