1. NOVELTY

In order to satisfy the novelty requirements for a design registration in South Africa, an aesthetic design must be new and original, and a functional design must be new and not commonplace in the art in question, immediately before the earliest priority date of that design. 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 (a) in the case of an integrated circuit topography, a mask work or a series of mask works, within two years; or (b) in the case of any other design, within six months, of such release date.

The state of the art is defined as 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 (i) for the registration of a design in the Republic; or (ii) 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, of which the date of application in the Republic or convention country, as the case may be, is earlier than the date of application or the release date contemplated in subsection (2).

2. REGISTRATION IN PART A AND/OR PART F:

In terms of the current Designs Act, a design has to be categorised as an aesthetic design or a functional design. An aesthetic design has to be registered in Part A of the Register and a functional design in Part F of the Register. An application for a registered design must select either Part A or Part F of the Register. A design having both aesthetic and functional features can be registered in both Part A and Part F by filing two separate applications designating Part A and Part F respectively. For Part A registrations, the Act excludes functional features from the ambit of aesthetic design protection. However, for Part F registrations, the Act does not exclude aesthetic features from protection. Thus, in the case of an article having both aesthetic and functional features, it is possible that a registration in Part F would provide protection not only for the functional features but also for the aesthetic features of the design. We are not convinced that total reliance should be placed on such an interpretation, and to be on the safe side and to secure maximum duration of protection for aesthetic features, the proprietor of a design having both functional and aesthetic features should preferably file applications in both Parts A and F.

A design for functional features of a spare part for a machine, vehicle or equipment, cannot be protected in Part F of the Register. However, a design for non-functional features of a spare part (e.g. a motor vehicle body part) can be protected in Part A of the Register. If an application is inadvertently filed in the wrong PART of the Register, the error can be made good, while the application is pending, by way of formal application for amendment. It is also permissible to omit a Part A/Part F selection from the application when it is filed initially. In that case, however, the selection must be furnished to the Registrar within 14 days of the application filing date.

3. CLASS OF REGISTRATION

The monopoly right afforded by a registered design is limited to application of the design to articles which fall within the class in which the design has been registered. If the design is applied to an article which is not included in the class or classes in respect of which the design has been registered, then such article will not fall within the scope of the protection provided by the registered design. Where a particular design can be applied to articles which are in different classes, separate design applications should be filed in the different classes.

4. EMBODIMENTS

A design registration is obtainable for a single embodiment only of an article. Where there are more than one embodiment, separate applications need to be filed. Since the Designs Act does not provide for the filing of divisional applications, the decision as to whether or not to file separate applications in respect of different designs/articles or different embodiments thereof, cannot be deferred. An exception to the rule that separate embodiments of an article have to be protected by separate design registrations, is provided by a “set of articles” which is defined by the Designs Act as 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. A cutlery set, for example, falls within this definition and can be protected with a single registration.

5. DEFINITIVE STATEMENT

It is necessary to furnish a definitive statement of the features of the design for which the applicant claims protection. The definitive statement is used to interpret the scope of protection afforded by the design registration.

Examples of broad definitive statements are the following.

5.1 AESTHETIC DESIGN:

The features of the design for which protection is claimed include the pattern or the shape or the configuration or the ornamentation of a … substantially as shown in the representation

This definitive statement can include any one or more of the references to the pattern, the shape, the configuration, the ornamentation.

5.2 FUNCTIONAL DESIGN:

The features of the design for which protection is claimed include the pattern or the shape or the configuration of a … substantially as shown in the representation.

As mentioned above, one or more of the references to the pattern, the shape, or the configuration can be included in the definitive statement.

In each case it is possible, in the definitive statement, to exclude or disclaim protection for specific aspects of the design, for example aspects identified by broken lines or otherwise identified on the representations.

6. ARTICLES

Regulation 14 provides that the application must state the articles to which the design is to be applied, and where the registrar so requires, the purpose of the articles to which the design will be applied, has to be furnished. [“Article” is defined in the Act as “any article of manufacture and includes a part of such article if manufactured separately”.

7. A BRIEF STATEMENT

Also has to be filed (and can be filed belatedly) for publication in due course. This statement should be in respect of “the features of the design”, should be in narrative form, should refer to the article or articles to which the design is to be applied, and should generally be limited to a single paragraph of not more than 150 words.

8. EXPLANATORY STATEMENT

An explanatory statement is optional for a Part A application, but required for a Part F application. The explanatory statement may refer to features of the article to which the design is to be applied including the function and/or the method or principle of construction of the article. If the design has features which merit particular mention, we recommend filing an explanatory statement. The explanatory statement may be used to assist in interpreting the scope of protection afforded by the design registration.

9. EXAMINATION AND REGISTRATION

The South African design procedure does not include a search by the South African Patent Office authorities, nor substantive examination of the design specification, nor opposition proceedings. Accordingly, if the formal (i.e. documentary) requirements are satisfied, the Registrar may issue a registration notice at any time without forewarning, and a design will be registered on that date. Registration of the design has to be published in the Patent Journal within three months form the date of registration.

10. TERM OF A DESIGN

The duration of the registration of an aesthetic design is fifteen years and for a functional design is ten years, from the date of registration thereof or from the release date, whichever date is earlier