Monday, April 30, 2007

By Johnny Fiandeiro

Necessity may well be the mother of all inventions, but sometimes the temptation to copy another person’s design can be dangerously overwhelming. It is therefore important for businesses to know the parameters of registered design protection, both for designers wishing to protect your work as well as for businesses possibly considering utilising another person’s design.

Design protection generally covers the shape, configuration, pattern or ornamentation, or a combination of these features, of an article. These features are the lifeblood of designers and, just as critically, the lifeblood of the business that takes the product embodying these features to market. Design registration is thus primarily directed towards the visual aspects of an article. As with other forms of intellectual property protection, the scope of protection provided by registered designs has limitations, but for many articles, a registered design can provide extremely effective protection.

A brief review of the Patent Journal, which gets issued every month and includes abstracts of recently registered designs, shows that designs are often used to protect the following articles:

· Containers and bottles;
· Cellular telephones;
· Household appliances and kitchen utensils;
· Personal care products such as toothbrushes and razors;
· Motor vehicles and associated accessories;
· Fashion items such as shoes and sunglasses;
· Advertising banners;
· Engineering components, such as rails, brackets and connectors;
· Fabrics; and
· Furniture such as chairs and sofas.

In South Africa, there is a distinction between aesthetic designs, which are directed towards articles having features that appeal to and are judged solely by the eye, and functional designs, which are directed towards articles having features that are necessitated by the function that the article is to perform. It is a distinction that tries to separate the former, such as a pattern applied to a fabric, from designs with a purely functional value, such as an engineering component having a particular shape or cross-sectional profile dictated by its function. Although these examples demonstrate an unambiguous distinction, in reality it is often very difficult to differentiate an aesthetic design from a functional one. The good news is that such grey areas can usually be easily addressed once a decision has been made to proceed with the registration of a design, whether functional or aesthetic in nature.

The primary requirements for aesthetic designs are that the design must be new and original, and for functional designs, the design must be new and not commonplace. Although the requirements of newness, originality and not being commonplace need to be assessed individually, they do tend to overlap, with the general thrust being that the design, when applied to a product, must give the product a unique appearance or individual characteristic.

There are, however, a number of limitations that need to be borne in mind and applied on a case by case basis. The first is a broad limitation, which prevents registered designs being obtained for articles which are not intended to be produced by an industrial process. Thus, for example, original works of art and other similar unique creations are not registrable. The second, more problematic, limitation is a prohibition on protecting "spare parts" for machines, vehicles or equipment as a functional design. There is unfortunately no definition of a "spare part", which in practice can cause difficulties. The general view is that if an article is intended to be regularly replaced it is a spare part, and vice versa.
The process of registering a design is surprisingly simple. As mentioned earlier, design registration is primarily directed towards the visual aspects of an article. Thus, a design application typically comprises a number of drawings or photographs showing various views of the article, together with a definitive statement setting out the features of the design and a brief statement of features. The definitive statement is used to interpret the scope of protection afforded by the design registration. A further advantage of obtaining design protection is that the design application can proceed to registration relatively quickly, thereby providing the proprietor of the design with an enforceable right without too much delay. Thus, for articles having a relatively short lifespan, such as the abovementioned fashion items including shoes and sunglasses, design protection can prove to be a powerful business tool to provide a much required competitive edge.

As with other forms of intellectual property protection, such as patents, there is a limited timeframe in which a decision as to whether or not to obtain design protection must be made. For designs, the decision needs to be made preferably before the article is disclosed to the public. There is, however, an innovative provision in South African design law that allows a person to file a design application within 6 months (for most types of designs) of the so-called release date, which is the date on which the design was first made available to the public. There are, however, a number of dangers with using this release date provision, especially if there is interest in obtaining design protection in foreign countries, but it is a useful and often used provision nonetheless.

Other practical considerations to bear in mind is that an aesthetic registered design has a maximum lifetime of 15 years, while a functional registered design has a maximum lifespan of 10 years. As with most other forms of intellectual property protection, renewal fees need to be paid to keep the registered design alive, and thus enforceable.

In conclusion, registered designs can act as a vital and effective deterrent to competitors looking to copy designs, and tend to feature quite prominently in intellectual property portfolios of most businesses. However, as with many laws and regulations, the devil’s in the detail, with there being no substitute for good legal advice on this field of law.