THE VALUE OF A DESIGN REGISTRATION JURISDICTION REPORT: SOUTH AFRICA
Mitzi Coertzen DM Kisch Inc
In MCG Industries (Pty) Ltd v Chespak (Pty) Ltd, the applicant brought an application before the North Gauteng High Court for an interdict against the respondent in order to restrain it from infringing the applicant’s registered design.
South African registered design number A2000/141, named Bottle Carrier, was filed in February 2000 and registered in class 9. According to the Design Regulations of 1999, class 9 covers “packages and containers for the transport or handling of goods”. Te design was registered in part A of the register as an aesthetic design.
According to the applicant, the respondent was making, importing, using and/or disposing of a bottle carrier, or crate, also included in class 9, and allegedly embodying the applicant’s registered design or using a design ‘not substantially different’ from it.
Registered design Infringing design
Section 1 of the Designs Act no. 195 of 1993 defines an aesthetic design as “any design applied to any article, whether for the pattern or the shape or the configuration or the ornamentation thereof ... having features which appeal to and are judged solely by the eye ...”. It is this definition, when read with section 14(5), that was the subject of dispute between the parties.
In section 14(5)(a), it is stated that “... no feature of an article in so far as it is necessitated solely by the function which the article is intended to perform ... shall afford the registered proprietor of an aesthetic design any rights in terms of this act, in respect of such feature ...”. Relying on section 14(5)(a), counsel for the respondent submitted that several features of the applicant’s registered design are functional and not aesthetic features, or are features that are necessitated solely by the function that the applicant’s bottle carrier is to perform. Te applicant, however, stated that although these features admittedly do perform a certain function in the bottle carrier, the shape and configuration of these features are not necessitated by the function.
In terms of section 35(5), a defendant facing infringement proceedings may rely upon any ground on which the registration may be revoked. Tis the respondent did, contending that the registered design should never have been registered as an aesthetic design and was therefore invalid.
Te respondent’s defence was rejected, the court holding that the design was validly registered as an aesthetic design.
According to section 20 of the act, the effect of the registration of a design shall be “to grant to the registered proprietor in the Republic ... for the duration of the registration, the right to exclude other persons from the 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 ...”.
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“THIS CASE IS INTERESTING AS IT ILLUSTRATES THAT ALTHOUGH THERE MAY BE DIFFERENCES BETWEEN A REGISTERED DESIGN AND A COMPETING PRODUCT, THE REGISTERED DESIGN WILL PREVAIL.”
Te judge stated that, in infringement proceedings, it has to be determined whether or not the alleged infringing product embodies the registered design or a design not substantially different. Te key is not differences, but substantial ones. As stated in Homecraſt Steel Industries (Pty) Ltd v SM Hare of Son (Pty) Ltd and Another, it is ‘a matter of degree’.
Te court concluded that the differences between the applicant’s design and the respondent’s crate were immaterial. Te respondent’s crate embodied the registered design and ‘constitutes an infringement of the applicant’s registered design’.
Te respondent was consequently interdicted from further infringing the registered design and was granted ancillary relief.
Tis case is interesting as it illustrates that although there may be differences between a registered design and a competing product, the registered design will prevail. Tis shows the value of a registered design—it does not only protect against identical copies. Te case is on appeal.
Mitzi Coertzen is a candidate patent attorney at DM Kisch Inc. She can be contacted at:
mitzic@dmkisch.com
World Intellectual Property Review January/February 2012
www.worldipreview.com
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