A recent decision concerning a functional design registration registered in terms of the Designs Act 195 of 1993 was handed down by Acting Judge Millar in the High Court, Gauteng Division, Pretoria. The ratio of the judgment, however, is also applicable to aesthetic design registrations.
Design registrations are the lesser-known alternative, or additional form of intellectual property protection to patents. In some cases, design protection is more effective than patent protection, in particular, where the novelty lies in the appearance of an article and where a proprietor seeks cheaper and quicker registration and enforcement.
An 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, which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof.
A functional design means any design applied to any article, whether for the pattern or the shape of the configuration thereof, or for any two or more of those purposes, any 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.
The Applicant in this case, Innovative Water Care Products (Pty) Ltd (“IWC”), is the holder a functional design registration for a design to be applied to a pool floater, which is used to dispense pool chemicals into a swimming pool. IWC’s product is well known in the South African pool cleaning market under the brand “HTH”. The Respondent, Fluidra Waterlinx (Pty) Ltd (“Fluidra”), launched its competing pool floater, marketed under the brand “Blu52” in 2019.
The unique feature of the HTH floater is the transparent nature of the tubular portion which extends from the floater head. This allows the pool chemicals contained inside the tubular portion to be visible from the outside of the floater to establish the extent of degradation of the contents of the floater. IWC’s functional design registration is directed at this feature and it is also this feature that the Blu52 floater was alleged to have copied.
IWC brought an urgent design infringement application for interim, alternatively final relief against Fluidra’s Blu52 floater based on its functional design registration. In the application it was not in dispute that IWC’s design registration had been correctly registered as a functional design and was otherwise valid and still had about two years of its term left before expiry. The dispute concerned whether or not IWC’s HTH floater, and therefore in turn, the Blu52 floater, were protected or covered by the design registration. In particular, Fluidra identified a number of differences between features depicted in the drawings lodged in support of the design registration that were not present in the HTH floater or the Blu52 floater.
An application for a design registration must be accompanied by a definitive statement which “shall be used to interpret the scope of the protection afforded by the design registration”. Regard may also be had to the explanatory statement which accompanies it, as an aid to interpretation.
The definitive and explanatory statements of IWC’s design registration read as follows:
“The features of the design for which protection is claimed include the shape and/or configuration of a container for water treatment chemicals, substantially as illustrated in the accompanying representations, it being a definitive feature of the container that the tubular portion, indicated by reference letter “A” in the representations, is transparent or translucent, to enable the contents of the tubular portions, indicated by reference letter “B” in the representations, to be viewed by the eye from outside the container. The contents B of the container are disclaimed.”
“The design provides for a container for water treatment chemicals. The tubular container portion houses the chemicals, particularly, but not exclusively, in table form, and depends from a flat. The tubular portion may be of a clear material and transparent or it may be of translucent material that may be colour-tinted and adapted to enable the contents of the container to be viewed by the eye from outside the container”.
IWC argued that that features of transparency and translucency of the tubular portion are protected by the design and that the graphic representations of the container as a whole in the design registration were simply indicative of the shape of the container (floater) and that the definitive and explanatory statements made clear what specific functional design was registered.
Fluidra argued that the container design shown in the design registration must be considered an indivisible whole and that because the Blu52 floater did not correspond precisely with the container shown in the representations of the design registration, the design registration was therefore not infringed.
The court held that the “substance” of the design was the transparency or translucency of the tubular portion. The court found that having regard to the definitive and explanatory statements, it was neither contemplated nor intended by IWC that the “general design, shape of form of the pool floater or the specific graphic rendering thereof was intended to be indivisible from the function of the transparent or translucent tubular portion.” This was clear from the use of the word “substantially” in the definitive statement. The isolation of the particular feature as being ‘definitive’ in the definitive statement supported this. Accordingly, the transparent or translucent feature taken alone was sufficient to infringe the design registration.
In light of its findings the court granted a final interdict against the Blue52 floater.
This case again demonstrates the importance of a well-drafted definitive statement and explanatory statement, particularly where the definitive statement does not take the form of the often used omnibus-type format.
Case citation: Innovative Water Care LLC and Another v Fluidra Waterlinx (Pty) Ltd (69172/2019)  ZAGPPHC 530 (25 October 2019)
By Sophia Smallbones | Associate