A registered design protects a design applied to an article, i.e. the appearance the article as it is judged by the eye. Registered Designs in South Africa are governed by the Designs Act (1) (“the Act”).
In terms of the Act, a design may be registered as a functional and/or aesthetic design if it is new and original (in the case of an aesthetic design) or new and not commonplace (in the case of a functional design).
An aesthetic design may be any design which is applied to any article, by whatever means it is applied, which has features which appeal to and are judged solely by the eye. The design may be for the shape, configuration, ornamentation or pattern applied to the article (or two or more of these purposes).
A functional design may be any design which is applied to any article, by whatever means it is applied, which has features which are necessitated by the function of the article to which the design is applied, is to perform. The design may be for the shape, configuration, or pattern applied to the article (or two or more of these purposes).
A design is deemed to be new if it is different from or if it does not form part of the state of the art immediately before the date application for registration thereof or the release date thereof, whichever is the earlier. The state of the art comprises all matter made available to the public, anywhere in the world, whether by written description, or by use or any other way.
An aesthetic design is original if it is the designer’s own work whilst a functional design is commonplace if it does not excite the interest of a person skilled in the art.
Designs for articles which are not intended to be multiplied by an industrial process are not be registrable under the Act. An industrial process can, however be broadly interpreted.
If the design meets the above criteria, an application for registration may be lodged by the proprietor of the design. The proprietor may be the author, a person for whom the author executed the design or any other person to whom ownership of the design has passed.
An application for a registered design must be accompanied by line drawings and should indicate whether the design is functional or aesthetic. Furthermore, the design should be classified according to subject matter.
Term and Effect of a patent
The duration of registration, provided renewal fees are paid annually, of:
- an aesthetic design is 15 years;
- a functional design is 10 years
from the date of registration thereof or from the release date thereof, whichever is earlier.
The effect of registration of a design is to grant to the registered proprietor in South Africa, for the duration of the registration the right to exclude other persons from the:
- disposing (e.g. selling);
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 can be registered for a wide variety of articles including car wheels, containers (e.g. milk bottles), jewellery, furniture, a pattern printed on a fabric, tread pattern on a car tyre, design of a cell phone, etc.
In addition to this, designs can also be registered for graphical user interfaces or layouts of websites, for example. Furthermore, the Act explicitly provides protection for integrated circuit topographies and mask works’ as functional designs.
The ambit of protection is determined by the novelty of the design. If there exists a large difference between the new design and the prior art, then the scope of protection of the new design will be broad. If there is a small difference between the new design and the prior art, the scope of protection of the new design will be narrow.
(1) 195 of 1993