A registered design is used to protect the physical appearance of an article. This may be contrasted with a patent, which protects the functional aspects of an invention or methods or principles of construction. However, in the case of a functional design, the article’s appearance may be necessitated by the function which the article to which the design is applied is to perform. Thus, there may be some overlap between the protection afforded by a registered design and that afforded by a patent. Registered designs and patents are not mutually exclusive and, where appropriate, a registered design and a patent may be registered for the same article.

A registered design may protect a two-dimensional design, such as that applied to a textile, for example. In such a case, design protection may overlap with the protection afforded by copyright in the artistic work comprising the design.

Where a design is applied to a container, the protection afforded by the registered design may overlap with the protection available under the Trade Marks Act 194 of 1993, which permits the registration of a trademark for a container for goods.

Typical examples of designs, which are routinely registered in South Africa, include those for containers, such as bottles, frames for sunglasses, motor vehicle body panels and even entire motorcars.

• Aesthetic Designs

  Aesthetic designs are granted exclusively for the aesthetic features of an article which are judged solely by the eye, e.g. an article of jewellery, the shape of a drinking glass, and the pattern applied to a fabric.

  This type of design excludes from registrability articles which have a shape which is dictated solely by the function of the article.

  To qualify as an aesthetic design there must be at least some aesthetic component inherent in the article. This does not mean that aesthetic merit is required. The terms usually used to describe this aesthetic component are “shape”, “configuration”, “pattern” or “ornamentation” of the article.
  
  
• Functional Designs
  
  

  Functional designs, on the other hand, do not require that the article have any aesthetic component. An article having a shape which is dictated, at least to a certain extent, by its function is protectable as a functional design.

  Articles which would qualify as functional designs are the mechanism of a clutch pencil, mouldings, cams and the like. Integrated circuit topographies and mask works are expressly mentioned in the Designs Act as being protectable by way of a functional design.

  It should be noted, however, that many functional designs do have an element of aesthetic appeal which has been introduced by the designer. Such designs may also registrable as aesthetic designs if protection is also sought for the aesthetic components of the design.

THE APPLICANT FOR A REGISTERED DESIGN - WHO MAY APPLY?

According to the Act, the proprietor of a design may apply for the registration of such design.

The proprietor is defined as -

• the author of the design; or
• where the author of the design executes the work for another person, the other person for whom the work is so executed; or
• where a person, or his employee acting in the course and scope of his employment, makes the design for another person in terms of an agreement, such other person; or
• where the ownership of the design has passed to any other person, such other person.

The author or creator of the design is automatically the owner of the design and entitled to register it unless the design was made for another person (including a company). In the latter event, that other person is the owner and entitled to register the design. Usually a design is considered to have been made for some other person if the author or creator has been paid to make the design.

Whilst the applicant for a registered design must be the owner (proprietor) of the design, proof of ownership is not required. Proof may, however, be needed if ownership of the registered design becomes the subject of litigation.

Where the applicant for a registered design is not the author of the design, the registrar may require proof of the assignment of the design from the author to the applicant. It is prudent to obtain such proof of assignment at the time of filing an application for a registered design.

DURATION OF REGISTRATION - HOW LONG DOES A REGISTERED DESIGN LAST?

A registered aesthetic design remains in force for a maximum period of 15 years and a registered functional design remains in force for a maximum period of 10 years.

In each case annual renewal fees must be paid, in order to keep the design in force. The first renewal fee is payable on the end of the third year from the date of registration of the registered design or the release date, whichever is earlier.

A registered design may be declared invalid by the High Court at any time during its life on the basis that it did not fulfil the requirements for registration or registrability outlined above at the time the application for registration was made.

THE EFFECT OF A REGISTERED DESIGN

The effect of registration of a design is to grant the registered proprietor the right to exclude other persons from making, importing, using or disposing 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.

• How do others know my design is registered?
  
  

  It is common practice to mark articles manufactured according to a registered design with a reference to that design. Such reference usually takes the form "R.S.A. REGISTERED DESIGN NO. A2007/12345", where the number is the number allocated by the Designs Office.

  Marking is not, however, compulsory, and where an article is not marked, the question of whether or not a registered design exists may be answered by conducting a search at the Designs Register in Pretoria.

  Failure to properly mark articles may, however, jeopardise the registered owner’s right to obtain damages for design infringement.

  
  
• How may a registered design be enforced?

  A registered design, whether aesthetic or functional, entitles the owner to institute proceedings against a person making unauthorised use of the design.  There are three remedies available to the registered owner. This first is an interdict preventing further infringement. The second is compensation for any damage suffered as a result of the infringement. The third is delivery up of all infringing articles.

  These remedies are not mutually exclusive. It is therefore possible to be awarded an interdict and damages, for example.

  Infringement of a registered design may also be found where the offending design is not necessarily identical to that of the proprietor, but is "not substantially different" from the registered design.

  In design infringement litigation in connection with aesthetic designs, the comparison between the alleged infringing article and the registered design has, under the former law, been based on a visual test. Whilst there have been no judicial decisions under the present law, it is expected that such a visual test will be applied to both aesthetic and functional designs. A visual test may, however, prove to be inappropriate in some cases of functional designs such as in the case of integrated circuit topography and mask works.

  Furthermore, a determination of whether an article is the same as, or not substantially different from, a registered design, is influenced by the degree of similarity between the registered design, and designs available prior to the date on which the application for the registered design was made or the release date under the new Act.

  It remains to be seen whether or not functional designs will be treated quite the same as there are no Court decisions regarding functional designs. In many instances the threat of legal action may be sufficient to stop the infringement.

   

HOW ARE REGISTERED DESIGNS OBTAINED IN OTHER COUNTRIES?

A registered design covers only one country. It is, however, possible to obtain corresponding registered designs in other countries.

In terms of the Paris Convention, where a design registration has been applied for in South Africa, application in foreign countries must be made within six months from the date of filing of the application for registration in the first country.