Design law varies somewhat from country to country, but the key feature common to all, is that registration is essential before you have the right and the design must be new when you register. The Paris Convention allows you to register in further countries up to 6 months after the basic registration in your home country (or a first registration anywhere).
What does design registration protect?
Whereas original and innovative design may be protected under the copyright, patent and trademark laws, a specialised law for design protection is discussed here.
Aesthetic and functional design
Although good design usually inherently blends both aesthetic (eye appeal) design and functional (eg ergonomic) design in the product, the law in South Africa grants separate protection and different protection periods to aesthetic and functional features of designs and requires different conditions to be met before giving protection (see below). In some foreign countries functional design cannot be protected by a specialised law for design, but where it is, it goes under different names, such as “gebrauchsmuster” – Germany, “utility model” – France, “Petty patent” – formerly in Australia, now substituted by a new law for “minor inventions”. Aesthetic design is protected almost in all countries and in some the distinction between functional and aesthetic design is not so strictly drawn. Expert advice will be essential. In South Africa the register of designs has two parts, part A for protection of aesthetic features of designs and part B for protection of functional features of designs. Many designs are accordingly registered in both parts A and B. Designs registered before 1 May 1995 are only in part A because part B was only introduced after this date.
The categories of registered design protection
An aesthetic design registration protects the features of appearance of an article, ie the features of shape or configuration or pattern or ornamentation (or any combination of these), which appeal to and are judged by the eye, as shown in drawings or photographs of the registration.
A functional design registration protects the features of an article, which are necessitated by the function, which the article has to perform. These features are pattern, shape and configuration.
Integrated circuit topography and mask works are included in the category of functional designs in South Africa. In a number of foreign countries (eg USA and Japan) there is specialised integrated circuit and mask work legislation. An integrated circuit is defined as an article in a final or an intermediate form containing electrical, electromagnetic or optical elements and circuitry, which is capable of performing an electrical or an optical function, and in which at least part of the electrical, electromagnetic or optical elements and circuitry are integrally formed, in accordance with a predetermined topography in a semi-conductor material. An integrated circuit topography consists of the pattern, shape of configuration of the three-dimensional disposition of the electrical, electromagnetic or optical elements and circuitry in an integrated circuit.
A mask work consists of a pattern of an image however fixed or encoded, having or representing at least part of an integrated circuit.
Who is protected by design registration?
You, the owner of a registered design may apply for the monopoly right, or a person or company for whom you made it in the course and scope of your employment, or to whom you assign it.
How does design registration protect you?
You have a monopoly right to prevent others from making, importing, using or disposing of in South Africa an article which falls within the class in which a design is registered, incorporating the design or a design not substantially different. It is not necessary that the owner of the design prove that the infringer had actually copied his design.
You must enforce your right through an appropriate South African Court. An attorney, patent attorney or agent or advocate can represent you. In foreign countries the foreign courts and lawyers must be used.
Relief can be by way of an interdict, either damages or a reasonable royalty in lieu of damages and surrender of any infringing product or article or of any product of which the infringing product forms an inseparable part.
What are the conditions for a valid design registration?
An aesthetic design has to be new and original whereas a functional design has to be new and not commonplace in the art in question. A design is new if it does not form part of the state of the art immediately before the date of application for the registration or the release date, whichever is the earlier. Where the release date is the earlier, the application for the registration thereof must be lodged within six months of the release date. The release date is the date on which the design was first made available to the public with the consent of the proprietor or his predecessor.
The state of the art comprises all matter available to the public (whether in South Africa or elsewhere) by written description, by use or in any other way as well as matter from prior pending or convention applications.
Both aesthetic and functional features of a single design applied to an article may be protected by separate design registrations.
Are there any exceptions to design registration?
An article which is in the nature of a spare part for machine, vehicle or equipment shall not be the subject of a valid registration for a functional design but it may be the subject of an aesthetic design. As mentioned, the rules for design law in foreign countries are different and complex.
Design protection is not for inventions
Broadly speaking, a patent protects an invention in many embodiments, which incorporate the underlying invention. Functional and/or aesthetic design is applied to a commercially suitable embodiment in order to bring it to market acceptance.
How long does design registration protect you?
The maximum duration in South Africa of protection for an aesthetic design is fifteen (15) years whereas the duration for a functional design is ten (10) years from registration or from the release date, whichever is the earlier. Annual renewal fees must be paid after the third year. The fees may be viewed on the CIPRO website at www.cipro.gov.za.
Provision is made for the restoration of lapsed design registrations where the lapsing was unintentional and where no undue delay has occurred in the making of the application for restoration.
Abuse of design rights
Compulsory licences are possible in the case of abuse of rights, eg. failing to make the design available adequately and to a commercial extent, failing to meet the demand for the design to an adequate extent and on reasonable terms and failing to grant licences on reasonable terms, where they should be granted in the public interest.
What will design registration protection cost you?
The South African costs are given below. Consult an IP lawyer for foreign costs, they are generally much higher than for South African rights.
A R240 revenue stamp is all that you need pay if you file the application yourself. A patent attorney might charge R4 000 to do it for you. If he has to do drawings that would be extra and drafting definitive and explanatory statements and an abstract requires a further fee. The first renewal fee is R120 and the last for functional designs is R110, for aesthetic designs R149. A patent attorney would charge about R725 for maintaining a reminder system for you and renewing the registration for you (2008 fees). The attorney’s fees include not only professional advice but also the creation of a file, preparation of documents and drawings and the running of a maintenance and reminder system for timeous renewal of registration fees.
What countries are covered by design registration protection?
A South African registered design has effect only in the territorial area of South Africa. To obtain protection in other countries applications have to be filed in such countries. A South African application can serve as a basis to claim convention priority rights in most other countries, provided a corresponding application is filed in that other country within six months of the South African application. A community design covers 25 European countries.
Tips and comments on design registration protection
A design must be registered in one or more specified classes listed in the Designs Classification of Goods. The protection afforded by the registration is restricted to the nominated class or classes in which the design has been registered.
Classification lists are available from the Designs Registration Office at CIPRO in Pretoria (see address list at the back of this publication.
It is probably safer to keep new designs confidential until a registration application has been filed, however, if you wish to use the 6 months grace period it would be wise to discuss this with a patent attorney. Employees and others should be required to sign confidentiality undertakings.
Once your design is registered, it should be marked with the words “registered design” and the registration number; otherwise you may find that infringement damages are not recoverable. It is a criminal offence to indicate that a design is registered if it is not.
When you are commissioned to create a design, ensure that the term of the contract correctly reflects your intentions and your rights to the design.
Basic procedure for design registration
A private individual or a company may apply. The applicant may file the registration him or herself or by making use of the services of a patent attorney firm. It may help you to have a look at the Patent Journal before you fill in your application forms. The Patent Journal is a monthly publication with bibliographic information, accompanied by a written note and drawings or images concerning registration of trademarks, patents and designs. You can order the Patent Journal from Government Printing Works, Bosman Street, P/Bag X85, Pretoria 0001.
The basic procedures to register are as follows:
Step 1: It is advisable to do a novelty search at the search facility at CIPRO’s Paper Based Disclosure Centre. The cost is R4 and it is a search that the applicant can do him/herself or appoint a patent attorney to do it on their behalf at extra costs.
Step 2: To apply for registration, a set of forms must be completed consisting of D1 (dupl.), D2 (dupl.), D3, D6 (dupl.) and D8 (dupl.). The registration fee is R240. Application forms can be obtained from the Registrar of Designs at CIPRO or can be downloaded from their website www.cipro.gov.za
Representations of the design must be filed on A4 size paper. It can be drawings or photographs. Drawings are preferred as far as possible, without explanations or side scripts. The applicant may indicate which view is shown, for example front view, side view, etc. Photographs must be studio photographs. No background details or person must be in the photograph. It must only show the object that needs to be protected. If other objects need to be in the picture for indication purposes, a disclaimer must be written in the Explanatory Statement to disclaim protection of that part. There may be more than one view on a page, but seven identical clear copies must be submitted of every page, for example if there are three different pages – 3 x 7 copies. On one of those pages, one picture that shows the object the best, must be attached to D8 “for publication” to be advertised in the Patent Journal.
If the applicant wishes to register the design in other countries as well, he/she needs to do so within six months from the filing of the South African filing by making use of the services of a patent attorney firm.