Member Article

A recent decision involving registered designs is a reminder of how useful design law can be, in the sense that it can be used to protect an almost limitless range of products. The decision in the UK case of Ahmet Erol v Sumaira Javaid (Design) (a decision of the Appointed Person, 18 May 2017) does not create any law, but it does illustrate two things.

The first is how registered designs can often be very low-tech. The second is how novelty is the big issue in design law, in the sense that it’s only possible to validly register a design that is, in fact, new. Although a UK case, it is relevant in South Africa too. In this case, the two registered designs in issue were for nothing more than garments bearing a modified Union Jack on the chest (one of them also had a tick or swoosh). The registrations were attacked on the basis that they lacked novelty or individual character. It is important to note here that, although South African design law is derived from and is quite similar to UK law, UK law requires a design to be both new and to have an individual character (an expression that is defined), whereas South African legislation simply talks of novelty and originality (which we understand to be incorporated in the UK definition of individual character).

In support of the claim that the registrations were invalid, Javaid had submitted so-called “prior art” in the form of photos of garments featuring Union Jacks that had appeared on Facebook before the design applications had been filed. The Appointed Person found that, whereas the designs were new in that they differed from the prior art in more than “immaterial details”, they did not have individual character, because the overall impression they produced on informed users did not differ from the overall impression produced on such users by the prior art (the garments shown on Facebook). The Appointed Person quoted these lines from the UK case of Apple v Samsung, which remind us how practical design law is, and how it really is all about appearance: “I start by reminding myself that what really matters is what the court can see with its own eyes … the most important things are the registered design, the accused object and the prior art, and the most important thing about each of these is what they look like.” As mentioned, South African design law is similar to UK design law, but there is another difference that needs to be highlighted. In South Africa, it is possible to register both an aesthetic design and a functional design. An aesthetic design has “features [which] appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof”. The protection is for 15 years.

A functional design has “features [which] are necessitated by the function which the article to which the design is applied is to perform”. The term of protection here is 10 years. An important distinction between the two types of design is that a functional design cannot cover a spare part for a vehicle, machine or equipment – there is no such exclusion regarding an aesthetic design. This distinction came up in a rare and recent South African design case, one that went all the way to the Supreme Court of Appeal (“SCA”), Bayerische Motoren Werke Aktiengesellschaft (BMW) v Grandmark International (Pty) Ltd and Another. What happened here was that BMW registered aesthetic designs for various BMW parts – a bonnet, grill, headlight assembly and front fender. The company then used these aesthetic design registrations to stop Grandmark from selling so-called “replacement parts”; in other words, parts that had not been made by BMW. Grandmark responded by applying to cancel the registrations on the basis that the various parts were functional in nature, and that the aesthetic design registrations were therefore invalid. In order to establish exactly what an aesthetic design is, the SCA looked at some famous design law decisions. There was the old British case of Amp Inc v Utilux (Pty) Ltd, where the court said: “The phrases ‘appeal to’ and ‘judged solely by the eye’ denote features which will influence choice or selection.” It went on to say that the features “must be calculated to attract the attention of the beholder.” There was the South African case of Swisstool Manufacturing Co v Omega Africa Plastics, where the court said: “While the eye is to be the eye of the court, the court should view the design through the spectacles of the customer.”

The SCA concluded as follows: “What emerges from the analysis is, essentially, that aesthetic designs are those that invite customer selection – and customer discrimination between articles – solely by their visual appeal”. The SCA went on to say that vehicle components “are not selected by customers for their appeal to the eye”, but rather “for the function they perform – which is to replace components so as to restore the vehicle to its original form”. It followed, therefore, that the spare parts had wrongly been registered as aesthetic designs, and that the registrations were invalid. Design law is a much-overlooked area of IP law. Yet, it offers a host of opportunities. For advice on design registration, contact:

Rowan Forster

patent attorney director IP [email protected] cell: +27 83 440 3170