REQUIREMENTS

The Designs Act provides that any aesthetic design which is new or original at the date of application for registration is registrable.

A functional design is required to be new and not commonplace in the art in question.

In terms of the Act, a design is new if it does not form part of the state of the art immediately before the date of application for the design. The state of the art comprises all matter, which has been made available to the public (whether in South Africa or elsewhere) by written description, by use or in any other way.

The Designs Act provides a grace period of six months. Therefore, if the design owner made the design publicly available, a design application may still be filed provided it is done so within six months of the release date (see below).

An integrated circuit topography, mask work or series of mask works enjoys a grace period of two years.

The danger of only applying for design protection after the design has already been disclosed is that any third party who starts using the design after the release date but before application is made for a registered design may continue to use the design after registration.

Also, where the design is released before the application date, it may not be possible to obtain valid design protection for the design in several foreign states. Accordingly, where possible, it is advisable to file an application for a registered design before the design is made available to the public.

RESTRICTIONS

Industrial Process

Designs for articles which are not intended to be multiplied by an industrial process are not registrable under the Act. A sculpture, for example, which is not intended to be mass produced, may not be protected by way of a design. It is, however, protected by copyright.

Spare Parts

If an article is in the nature of a spare part for a machine, vehicle or equipment, no feature of pattern, shape or configuration of such article shall afford the registered proprietor of a functional design applied to any one of the articles in question any rights respect of such features.

This restriction is difficult to interpret and regard must be had to case law. If you are concerned that you may not be able to obtain design protection because the article may be “in the nature of a spare part”, please contact us to obtain expert advice.