BASIC GUIDE TO DESIGNS

Introduction
Any product or article has a distinctive appearance. To have a competitive edge a
product must have an appearance, which is more pleasing, more acceptable to
purchasers than other similar products in the market place.

It is not always easy to design a new shape for a product. Designers must have a special flair to create new designs.

Take for example the designers of motor cars: Many old designs will not sell today. On the other hand some designs were so revolutionary, that competitive car producers were compelled to follow these designs and adapt the shapes of their cars if they wanted to remain in business.

To design a shape of an article or product requires an intellectual effort. The result is "intellectual property". If this "intellectual property" is not protected, others can copy it.

It therefore is important to register designs so as to have exclusive rights therein for a time limited period. By doing this new markets can be opened and explored and the costs of developing a new design can be recovered.

The way to obtain protection for such "intellectual property" is to register a design at the Designs Office.

Many products are expensive to produce. A good example is a mould for a plastics
injection procedure. Some moulds cost a fortune. Yet, if the design of the product is not protected, others can freely copy the shape and appearance of the product - without having to go into the effort and expense of designing the product and in particular of designing the details of the mould to be used.

Therefore, if a design is not protected, the designer must not be frustrated if competitors copy and compete - often at a lower price. The designer can only blame himself. A law has been enacted by parliament to protect his rights and if he does not make use of it, he must suffer the consequences.

The sign of successful industrial development of a country is often reflected in the design of its products. Well known designs such as furniture from Finland, Italian car designs, French dresses, shoes from Italy, German machines and British textile patterns helped to promote exports from those countries and to create jobs.

Today economical competition, be it national or international, compels competitors to select optimum designs, in particular for new products. These designs generally originate from expensive and time-consuming design research and marketing development.

Such design research and development can take place as an integral part of a manufacturing or marketing concern, at private or instructional research institutions or often even by way of the work of an individual designer.

As mentioned above an essential aspect of research and development is the protection of designs. This is generally by way of time limited monopoly rights in the form of design protection for designs. The advantage of the monopoly rights is that it enables a manufacturer, a consultant, a researcher or a designer to get compensated for his design expenses before the improvement becomes public property.

As will be explained below the present South African Designs Act of 1993, Act 195/1993 even provides the opportunity first to test the market and, if the design of the product appears to be successful, then to register a design. Six months are allowed from the "release date". This is different to patent applications where the invention must be new on the original filing date of the patent application. However, should someone else use the design in the meantime, it will not be possible to stop him.

Here we will provide details on the principles applicable and the procedure involved. If any questions remain, consult your patent attorney.

Reference will be made to the South African Designs Act of 1993, Act 195/1993 (as amended) (referred to as the "Designs Act"), and Regulations issued in terms of this Act.

Types of Design Registrations
A design can be registered as an "aesthetic design" or a "functional design."

Aesthetic design
An "aesthetic design" covers the external appearance of an article. In other words, the appearance is merely judged by the eye. The design may have a particular shape, such as a bottle, or it may be an ornamentation applied to an article, like a pattern on textile sheets, T-shirts, or towels. An "aesthetic design" does not cover the function for which the article is intended to perform, or a method or principle of construction.

The Designs Act states in Section 1(1)(i):

"‘aesthetic design’ means any design applied to any article, whether for the
pattern or the shape or the configuration or the ornamentation thereof, or for any two or more of those purposes, and by whatever means it is applied, having features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof."

The Designs Act furthermore makes it clear that an Aesthetic Design registration cannot protect functional features. It says in Section 14(5):

"No-

(a) features of an article in so far as it is necessitated solely by the
function which the article is intended to perform; or
(b) method or principle of construction,

shall afford the registered proprietor of an aesthetic design any rights in terms of this Act in respect of such feature, method or principle."

Functional design
There are basically two types of "functional designs."

1. The first type involves a design, which has features which are necessitated by the function, which the article, to which the design is applied, has to perform.
2. The second type involves integrated circuits, namely an integrated circuit topography, a mask work and a series of mask works.

Thus a functional design can provide protection for functional features, such as happens in the case of movement or driving elements (e.g. cams, levers, gear wheels).

The Designs Act defines the characteristics of these types of "functional designs".

A "functional design" is described in the Designs Act in Section 1(1)(xi) as follows:

"‘functional design’ means any design applied to any article, whether for the pattern or the shape or the configuration thereof, or for any two or more of those purposes, and by whatever means it is applied, having features which are necessitated by the function which the article to which the design is applied, is to perform, and includes an integrated circuit topography, a mask work and a series of mask works".

Section 1(1)(xii) gives a definition of an "integrated circuit":

"‘integrated circuit’ means an article, in final or 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 a part of the electrical, electromagnetic or optical elements and circuitry are integrally formed, in accordance with a predetermined topography, in a semiconductor material".

The Designs Act further defines in Section 1(1)(xiii) an "integrated circuit topography":

"‘integrated circuit topography’ means a functional design which consists of the pattern, shape or configuration of the three-dimensional disposition of the electrical, electromagnetic or optical elements and circuitry of an integrated circuit".

A "mask work" is defined in Section 1(1)(xv):

"‘mask work’ means a functional design which consists of a pattern of an image however fixed or encoded, having or representing at least a part of an integrated circuit".

Finally a "series of mask works" is described in Section 1(1)(xxv) as follows:

"‘series of mask works’ means a related group of mask works which together represent the three-dimensional disposition of the electrical, electromagnetic or optical elements and circuitry of an integrated circuit".

Registering both types of designs
Section 15(3) stipulates that the same design may be registered both as an aesthetic design in Part A of the register and as functional design in Part F of the register.

If it is not clear whether a design has purely aesthetic characteristics or whether it is merely functional, or if it has both aesthetic and functional features, it is advantageous to register the design both as an aesthetic design as well as a functional design.

An example is a new design of a screw driver: The handle may have a pleasant shape - pleasant to look at. Yet the handle could be very functional - easy to grip when operating the tool. Such a design is best protected both by a functional as well as an aesthetic design registration.

Registration in more than one class
Section 15(4) states that a design can be registered in more than one class. However, for protection in different classes, independent applications have to be filed.

An example is the design of a motor vehicle. Such a design obviously is filed in class 12, covering the vehicles and parts thereof. Yet it could also be applied in the toy class (class 21) and should be registered in that class too.

Spare Parts
"Spare parts" for a machine, a vehicle or equipment are not protectable by way of a design registration. Such protection is specifically excluded in terms of the Designs Act in Section 14(6) reading:

"In the case of an article which 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 in terms of this Act in respect of such features."

Novelty
An aesthetic design must be "new" and "original" to be protectable, whereas a functional design must be "new and not commonplace in the art."

"Novelty" is considered to exist if the design does not form part of the state of the art immediately before the date of the application for registration thereof or the release date thereof, whichever is the earlier.

"Novelty" is defined in the Act in Section 14(2):

"A design shall be 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 of application for registration thereof or the release date thereof, whichever is the earlier: Provided that in the case of the release date thereof being the earlier, the design shall not be deemed to be new if an application for the registration of such design has not been lodged within six month of such release date."

Therefore, to get a valid aesthetic or functional design registration, a design must be new on the date of filing or on the release date, whichever is earlier.

You therefore cannot copy a design of a product seen on an overseas trip in the USA, UK or Australia and then register it in your name in South Africa. Firstly, such a design is not "new" and, secondly, you are not the owner of the design. (However, if the design has not been registered in South Africa, you are free to use it !).

"Release Date"
The "release date" is the date on which the design was first made available to the public (anywhere in the world with the consent of the proprietor or any predecessor in title).

The "release date" is defined as follows (Section 1(1)(xxiv)):

"‘release date’, in relation to a design, means the date on which the design was first made available to the public (whether in the Republic or elsewhere) with the consent of the proprietor or any predecessor in title".

"State of the Art"
The "state of the art" comprises all matter, which has been made available to the public anywhere in the world by written description, by use or in any other way, and all matter contained in an application for the registration of a design in the Republic of South Africa or an application in the convention country for registration of a design, which has subsequently been registered in the Republic as a convention application.

The "state of the art" is defined in Section 14(3) as follows:

"The state of the art shall comprise-

(a) all matter which has been made available to the public (whether in the Republic or elsewhere) by written description, by use or in any other way; and
(b) all matter contained in an application for the registration of a design in the Republic or of an application in a convention country for the
registration of a design which has subsequently been registered in the
Republic in accordance with the provisions of section 44."

Disclosure without Proprietor’s Knowledge or Consent
The Designs Act protects a person against unauthorized disclosure of his or her design by other persons - therefore the novelty is protected in certain instances.

Thus the Designs Act provides in Section 17:

"The registration of a design shall not be invalid by reason only of the fact that the design was disclosed, used or known prior to the release date if the proprietor proves that such knowledge was acquired, or such disclosure or use was made, without his knowledge or consent, and that the knowledge acquired or the matter disclosed or used was derived or obtained from him, and that he applied for and obtained protection for his design with all reasonable diligence after learning of the disclosure, use or knowledge."

Multiplication by Industrial Process
If a design cannot be multiplied by an industrial process, it is not registrable. Such
designs are expressly excluded from design protection in that Section 14(4) provides as follows:

"Designs for articles which are not intended to be multiplied by an industrial process shall not be registrable under this Act."

The purpose therefore is to exclude non-reproducible designs from registration, such as sculptures, which cannot be reproduced. Actually this provision in the Designs Act is superfluous because if no reproduction can take place, how can infringement occur?

The idea is to exclude protection of articles, which are merely artistic works protected in terms of the Copyright Act 1978, Act 98/1978.

Period of a Registration
An aesthetic design can be kept in force for fifteen years but a functional design can only have a life of ten years from the release date or the date of application, whichever date is earlier.

Renewal fees are payable on an annual basis as from the end of the third year from the release date or the date of application, whichever date is earlier.

Restoration of Lapsed Design Registration
If a design registration has lapsed due to the non-payment of renewal fees, it can be restored under certain circumstances. The basic requirements are:

1. The omission to pay the renewal fees must have been unintentional.
2. No undue delay has occurred in making the application for restoration.

The application is advertised in the Patent Journal and, if no opposition is filed, the
design registration is restored after payment of all outstanding renewal fees.
According to Section 24(1) of the Designs Act, "any person who, during the period between the lapse of such registration and its restoration, has expended any money, time or labour with a view to making or disposing of articles embodying the registered design, may apply in the prescribed manner to the court for compensation in respect of the money, time and labour so expended".

Full details of the procedure involved and the consequences of registrations are set out in Section 23 and 24 of the Designs Act.

Correction of Clerical Errors
Clerical errors and amendments may be effected. Procedural details are stated in
Sections 26 and 27 of the Designs Act.

Classes
The Designs Register is divided into 32 classes. A design application has to be filed in a particular class in order to obtain protection in that class.

Block Diagram of Application Procedure



Application Procedure
A design application is filed at the Designs Office in Pretoria.

The application must include all necessary forms, drawings or photographs, classification, abstract for publication and Power of Attorney (if filed by a representative).

The Designs Office initially provides a filing number and filing date and issues a filing
receipt, which is sent to the applicant or his representative.

Thereafter the application is formally examined by the Designs Office. If there are any outstanding documents or any other requirements, the applicant is informed and he can then rectify the defects.

Once the application is found to be in order, a notice of acceptance and grant is issued and is sent to the applicant or his representative, who must arrange for the acceptance to be published in the online Patent Journal.

The Designs Office then issues a registration certificate and forwards it to the applicant or his representative.

Thereafter renewal fees have to be paid annually as from the end of the 3rd year from filing or the release date, whichever is the earlier. All of the renewal fees can be paid simultaneously. An aesthetic design registration can be kept in force for 15 years from the filing date but functional design registrations have a shorter life of 10 years.

Searches in Designs Office
It it therefore is possible to conduct the following types of searches:

1. Designs registered: If a design registration number is known, the details of the registration can be checked on the register. These details include the proprietor’s name, title, filing date, registration date, classes, priority details, status (whether in force or expired) and entry of any recordals, such as assignment, licences.
2. Design search: Up to 2010 a search can be conducted in a particular class or in various classes to see if a particular design has been registered thereafter online searches have to be conducted. Thereafter online searches have to be conducted.

Copies of a Design Registration
When a design application is pending, it is closed to the public and no copies can be obtained. Only after the design has been registered, can copies be obtained from the Design Office (Section 19).

Applicants
The "proprietor" of a design may apply for registration. The proprietor is defined in the Designs Act (Section 1(1)(xix) to be as follows:

"a) the author of the design; or

where the author of the design executes the work for another person, the person for whom the work is so executed; or

where a person, or his employee acting in the course of his employment, makes a design for another person in terms of an agreement, such other other person; or

where the ownership in the Design has passed to another person, such other
person."

This means that if, say for instance in the case of a company, one of the employees develops a new design, the company will be the proprietor and can apply for registration.

Rights of Employers
The rights of employers in a design as developed by an employee are restricted as stated in Section 29(2) reading:

"Any condition in a contract of employment which-

(a) requires an employee to assign to his employer a design made by him otherwise than within the course of his employment; or
(b) restricts the right of an employee in a design made by him more than one year after the termination of the contract of employment,

shall be null and void".

Therefore any employment contract providing a blanket assignment of all rights in
designs developed by an employee is invalid. An employer is only entitled to the rights in those designs, which the particular designer has made.

For example, if a person is employed as a driver in a household goods plastics factory, the company cannot have any rights in designs made by the driver. On the other hand, if the factory employs a designer with the specific job description to "develop designs" and such a designer comes up with a new design of a plastics cup, then the right to the design undoubtedly belongs to the company.

Assignment of Rights
The rights in a design application or a design registration may be assigned at any time. (Section 29(1)).

Set of Articles
Often a design is applied to a set of articles. This happens in particular in the case of crockery, cutlery, or furniture. In such cases it is not necessary to register the individual items separately but one application can cover a set of articles. Whereby costs are saved.

(However, often it is better to protect the articles individually as well).

The Designs Act makes provision for registration of sets of articles. Thus is provided in Section 2(2) of the Designs Act as follows:

"Any reference in this Act to an article shall be deemed, according to the context, to be a reference to-

(a) a set of articles; or
(b) each article which forms part of the set of articles; or
(c) both a set of articles and each article which forms part of that set."

A "set of articles" is defined as follows (Section 2(3)):

"a ‘set of articles’ means a number of articles of the same general character
which are ordinarily on sale together or intended to be used together, and in
respect of which the same design, or the same design with modifications or
variations not sufficient to alter the character of the articles or substantially affect the identity thereof, is applied to each separate article: Provided that a series of mask works shall not be a set of articles."

The Registrar’s decision as to whether or not a number of articles constitute a set of articles is final, notwithstanding anything contained in the Designs Act (Section (2)(4)).

It is important that the same design must exist in all articles. For instance if a certain pipe construction is used in furniture, this must be present in all articles constituting the set (e.g. chair, table, couch, etc.).

Effect of a Design Registration
A registered design offers exclusive rights regarding the importation, manufacturing, marketing and use of an article.

The specific terms of the Act are set out in Section 20:

"(1) The effect of the registration of a design shall be to grant to the registered proprietor in the Republic, subject to the provisions of this Act, for the duration of the registration 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, so that he shall have and enjoy the whole profit and advantage accruing by reason of the registration.
(2) The disposing of an article embodying a registered design by or on behalf of a registered proprietor or his licensee shall give the purchaser the right to use and dispose of that article."

If design protection only exists in South Africa, it means that any article applying the design and made outside of South Africa, may not be brought into South Africa. However the article may be made outside of South Africa and be sold outside of South Africa without infringing the South African registered design rights.

Revocation of Design Registration
Yes, any design registration can be revoked based on any one or more of the following reasons (Section 31):

"(a) that the application for the registration of the design was not made by a
person entitled thereto under section 14;
(b) that the registration of the design is in fraud of the rights of the applicant or of any person under or through whom he claims;
(c) that the design in question is not registerable under section 14;
(d) that the application for the registration of the design contains a false
statement or representation which is material and which the registered proprietor knew was false at the time when the statement or representation was made;
(e) that the application for the registration of the design should have been refused in terms of section 16."

A design registration is presumed to be valid until the contrary is proved. If a company is interested in applying a certain registered design, it may be worthwhile to conduct searches, also overseas, to establish the novelty of the design in question before entering into a licence agreement.

Infringement Proceedings
If a registered design is being infringed by another part, the proprietor of the design registration can take appropriate action by suing the infringer in the High Court. The relief claimed can include the following (Section 35(3)):

"(a) an interdict;
(b) surrender of any infringing product or any article or product of which the
infringing product forms an inseparable part;
(c) damages; and
(d) in lieu of damages, a reasonable royalty which would have been payable by the licensee or sublicensee in respect of the registered design concerned."

Marking of Articles
While the application is pending, articles should be marked:

"Design Registration applied for", or
"RSA Design Application No..." (e.g. "RSA Design Application 97/5555".)

As the design registration certificate usually issues within 6 to 8 weeks from filing,
normally only the registered number is referred to.

When the design has been registered, the articles should be marked

"RSA Registered Design No.... (e.g. RSA Registered Design 97/5555)."

False Marking of Unregistered Designs
This is unlawful and a penalty is prescribed for such unlawful actions.

Section 49 deals with this aspect and stipulates:

"(1) Any person who-

(a) falsely represents that there is a registered design in respect of any
article; or
(b) represents that any article is the subject of an application for the
registration of a design knowing that no such application has been made or that an application made in respect thereof has been refused or withdrawn
or has lapsed,

shall be guilty of an offence and liable on conviction to a fine, or to imprisonment
for a period not exceeding one year.

(2) If any person disposes of any article on which is stamped, engraved or
impressed or to which is otherwise applied the word ‘design’ or ‘registered design’
or any other word expressing or implying that-

(a) there is a registered design in respect of the article; or
(b) the article is the subject of an application for registration of a design,
or to which any marking is applied in any manner so expressing or
implying, he shall be deemed for the purpose of this section to represent that there is a registered design in respect of the article or that the article is the subject of an application for registration of a design.

(3) The provisions of subsection (2) shall not apply to a person who disposes of articles in good faith in the ordinary course of trade, provided, when called upon to do so, he discloses the identity of the person from whom he acquired the article in question.

(4) Any person who is of the opinion that he is prejudiced by a representation referred to in subsection (1)(a) or (b), may apply to the court for an interdict against the continuation of that representation."

A "World Registered Design" ?
There is not such thing as a "World Registered Design".
If a design protection is required in a particular country, then a design application has to be filed at the Designs Office of that country.

Most countries belong to the International Convention. This includes the Republic of South Africa. A result of this is that if a design application is filed in the RSA (on say the 1st June 1998), then the applicant may file a corresponding application before the end of six months (i.e. on the 1st December 1998) in, say Germany, and claim as date for the German application the date of the RSA application (1st June 1998). If someone else had filed an application for the same design in Germany during the convention period (in our example between 1st June 1998 and 1st December 1998), the RSA applicant in Germany would have an earlier effective date, although actually having been filed at a later date.

Foreign applications are expensive and before filing such applications, the applicant
should check on the costs and be satisfied as to the commercial value of the design and as to its novelty.

Information Required for Filing
The following is required:

1. Applicant:

The full name, residential and postal address of the applicant (in the case of a company, the registered office address or business address also is necessary).

2. The Design:

Details of the design.

3. Drawings:

Drawings showing different views, e.g. plan, side, end view.

Photographs
In place of drawings, photographs can also be used. The requirements are as follows:

1. The photographs must be in black and white.\
2. The size of the photographs should not exceed about 12 cms x 12 cms (postcard sizes are in order).
3. The design must be shown clearly on the photographs with no background, writing or any other items which are not necessary for the design. In other words, there must be no hand, attractive female models or other persons viewing the article, or supporting structures.
4. Different views have to be shown of the design so that all features are clear. In normal circumstances these views will be from all sides. For example, in the case of a chair of which the sides are similar, the views required would be front view, a side view, a rear view, a view from above, and a view from below.

Design Licence Agreements
Before finalising a licence agreement, some basic points have to be agreed upon. These are

1. Period.
2. Royalty rate.
3. Exclusive or non-exclusive.
4. Territory.

In addition, the payment of an initial sum, and, where the licence is to be exclusive, minimum annual royalties have to be agreed upon.

When these points have been agreed upon, the agreement can be prepared and other aspects can also be included.

Compulsory Licences
The Design Acts provides for compulsory licences in the case of abuse of rights. Details of the procedure in obtaining such a licence are set out in Section 21.

Who May Represent an Applicant?
An applicant may file a design application himself or may instruct "an agent" to do so. The same applies to any other matter or proceedings in terms of the Designs Act (Section 13).

"An agent" is defined as a "patent attorney" in terms of Section 20 of the Patents Act 1978 (Act 57/1978) or an attorney.

Therefore, unlike a patent application where so-called "compulsory representation" is involved and a patent attorney is to be instructed, a design application can be filed by the applicant himself or he may instruct an attorney to do so. (This also applies to trade mark applications).