Thursday, June 07, 2007


A recent as yet unreported judgment of the Supreme Court of Appeal (Clipsal Australia (Pty) Limited v Trust Electrical Wholesalers [2007] SCA 24 (RSA)) has established important principles relating to the interpretation of the Designs Act 195 of 1993. This is the first judgement of the appeal court dealing with registered designs under the present act. These issues are discussed hereunder.

Sets of articles
The Designs Act permits the filing of a design application for a set of articles. A set of articles is 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 substantially the same design is applied to each separate article. The court held that the object of the provision is to enable an applicant to obtain registration for the design of more than one article for the price of one.

The act goes on to state that any question as to whether a number of articles constitute a set shall be determined by the Registrar of Designs. The court held that if the Registrar has registered articles as a set when they in truth do not form a set it is at best a matter for review but it cannot be raised as a defence to infringement or be a ground for revocation.

Further, the judgment establishes that the registration of a set of articles as such cannot be used in interpreting the scope of registration. Each member of a set has its own individuality and must be assessed on its own.

In summary, registration of a design applied to a set of articles provides a cost-effective way of registering a number of related designs and the issue as to whether such articles do in fact comprise a set is one for the Registrar to decide. In the absence of an application for review of the Registrar’s decision, the registration of a set of articles may not be used as a ground for invalidity or revocation of a registered design.

Whole or part
The judgment confirms that an applicant for a design may elect to isolate an aspect of his design with the object of claiming novelty or originality in respect of a particular feature. This is achieved by means of the definitive statement that is filed as part of the application. In the absence of the applicant choosing to isolate such an aspect of the design by means of the definitive statement, the whole of the design will be considered, not only for purposes of novelty and originality, but also in relation to infringement.

Assessment of novelty
The court confirmed the view that, by parity with the well established principles in regard to the patentability of inventions, it is not permissible to mosaic different pieces of the prior art in attacking the novelty of a registered design.

Further, the assessment of novelty of a design must take place against the background of relevant prior art, ie the definitive statement and the drawings have to assessed in the light of the state of the art to determine the degree of novelty achieved. This is so because where the measure of novelty of a design is small the ambit of the monopoly is small.

The court found that the present act differs structurally from its antecedents. It requires that a design must be new and original. While the act requires that novelty be tested against the prior art, there is no measure against which originality has to be tested. The court held that meaning of the term "original" as used with respect to aesthetic designs is the same as or akin to the meaning as used copyright law, ie that the design should not have been copied from another source.

The court held that test for infringement is not a trademark infringement test and the issue is not whether or not there is confusion or deception. Thus, it would be wrong to introduce concepts developed in a trademark context such as imperfect recollection. A designs test is closer to the patent infringement test and relies on the good sense of the tribunal which has to decide whether the substance of the invention has been pirated.