The Porsche 911 is undoubtedly an iconic car. Instant product recognition is, of course, something that most companies strive for. But fame and familiarity can create their own problems when it comes to issues of intellectual property.

Porsche recently suffered a setback when the EU General Court upheld a decision of the European Union Intellectual Property Office to cancel certain design registrations relating to the appearance of the Porsche 911. The applications for cancellation had been brought by a company called Autec, and the basis of the attack was that the designs lacked novelty. In particular, Autec claimed that the designs in issue weren’t novel because they were very similar to earlier versions of the 911. Porsche sought to counter this claim by arguing that the differences between the designs in issue and the earlier versions of the 911 were significant – the differences related to relatively minor things like fog lamps and the positioning of mirrors. The court did not agree with Porsche.

The really interesting feature of this case was that Porsche argued that it had limited freedom of design and that this issue should be taken into account. The company said that this was all down to the fact that consumers have certain expectations of what a Porsche 911 will look like, and that the company has to take account of these expectations – in essence, a “victim of our own success”-type argument. But the court felt that customer expectation is not a valid consideration in a novelty enquiry. Basically, the court said this: novelty means novelty, it doesn’t mean something less simply because consumers have certain expectations of the product. Customer expectations, said the court, “cannot be regarded as a factor limiting the freedom of the designer.”

Novelty does, of course, lie at the very heart of design law. What this means in practical terms, is that the product designer needs to get their design application in as soon as possible. Launching the product first to see if it’s going to succeed and then filing an application for registration when things are starting to look rosy is not really an option. This applies in South Africa as much as it does elsewhere.

It is, however, worth noting that South African design law differs from design law in other countries in the following important respect. Whereas design law is generally simply concerned with aesthetics, South African design law grants protection to both aesthetic designs and functional designs. The reason for this goes back to a decision taken many years ago to remove copyright protection from the industrial sphere and replace it with a new form of design protection.

The South African designs legislation, the Designs Act, 1993, describes an aesthetic design as one involving “features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof.” A functional design, on the other hand, is defined as one involving“features which are necessitated by the function which the article to which the design is applied is to perform.” In the case of an aesthetic design, the test for novelty is that it must be“new”and“original”. In the case of a functional design, the test for novelty is that it must be“new”and“not commonplace in the art in question.”

There isn’t a great deal of jurisprudence to guide us on what all these terms mean. We do, however, know from a very old British decision calledAmp v Utiluxthat the phrases“appeal to”and“judged solely by the eye” denote “features which will influence choice or selection.”The court there went on to say that the features“must be calculated to attract the attention of the beholder.”We know from an old South African case ofSwisstool Manufacturing Co v Omega Africa Plasticsthat the eye that does the judging is the eye of the court, although that eye is also required to look “through the spectacles of the customer.”

On the question of cars and car parts, we know from the recent South African case ofBMW v Grandmarkthat“aesthetic designs are those that invite customer selection – and customer discrimination between articles – solely by their visual appeal.” What this meant in this case, was that BMW’s aesthetic design registrations for various car parts like bonnets and fenders were invalid because 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.” They should, therefore, have been registered as functional designs.

Registered designs can provide effective protection to companies involved in a wide range of activities. Yet design law receives little attention and it is hopelessly underused.

For advice on using design law as part of your business strategy please contact:

Dr Joanne van Harmelen

patent attorney biotechnology IP

[email protected]

+27 82 770 5396