A design protects the novel appearance of an article. This novel appearance may be in the form of its shape, configuration, ornamentation and/or pattern. A design must be capable of being produced by means of an industrial process. Some articles, or features of an article, may be registrable under both the Patents Act and the Designs act Although an aesthetic design for a “spare part” is registrable, a functional design for a “spare part” is not.
The aesthetic category focuses on the visual appearance, as judged by the eye, and provides protection for the aesthetic features of designs (articles) registered as such.
- Aesthetical designs (look and feel) with a 10 year protection.
Functional designs, on the other hand, may be obtained if the design has features that are necessitated by the function that it has to perform. They are, however, still judged only visually and do not provide protection for the functional working of the design. The new pattern of a non-slip rubber mat, for example, can be protected in this way. Functional designs are therefore also evaluated more strictly under the Designs Act – a typical example is parts (including motor vehicle spare parts), which are not granted any protection under the Designs Act. On the other hand, designs for integrated circuits and accompanying mask works can be protected explicitly in terms of the Designs Act.
- Functional designs (shape, pattern or configuration) have a 15 year protection.
A design for articles which are to be manufactured industrially can be registered under the Designs Act, 195 of 1993, if it is new and original. Registration of a design protects the features of the appearance of a product, i.e. the external features of form, shape, pattern and configuration of a design applied to articles which are manufactured industrially.
The owner of a registered design is granted a monopoly to prevent others from making, importing, using or selling a product with materially the same appearance in South Africa, for a period of 10 and 15 years respectively for aesthetic and functional designs (three five-year periods, subject to payment of the renewal fees).
A manufacturing method or principle, the features of a design (other than the appearance) that are functional attributes of the product, inventions (which are protected by patent law), and artistic works not intended to be manufactured industrially (which are protected by copyright) cannot be Registered as designs.
What is registrable? To be registrable, an aesthetic design must be new and original, and a functional design must be new and not commonplace in the art. In South Africa, if the design has been disclosed a grace period of 6 months is permitted within which the applicant may register the design and obtain valid design protection. However, not all countries permit such a grace period. As a general rule it is therefore advisable to file a design application before any disclosure of the design occurs.
How to go about obtaining design protection? Applications for the registration of a design must be made to the Registrar of Designs before the novelty of the design lapses (e.g. through the prior public use of the design in South Africa, or by disclosure in a publication anywhere in the world). South African registered designs only enjoy protection within the territorial limits of South Africa. Like a patent application, a South African design application can serve as a basis to obtain convention priority design rights in most other countries, provided that the application for registration in the particular country is lodged within six months after registration of the design in South Africa.
Acknowledgements: Gerard Verhoef