Wednesday, April 11, 2007


The media has recently afforded much attention to a problem in the motor vehicle industry, being the manufacture of lookalike cars. In China, for example, manufacturers are producing lookalike models of the Mercedes S-class and the Rolls Royce Phantom. From a South African perspective, three bases of protection against such copying would be relevant, namely passing-off and unlawful competition (discussed together), copyright and design law.

Before discussing the different types of relief available, it is important to note that there are two different situations relating to the importation or production of lookalike cars. Firstly, the whole car can be copied, so that the shape of the copy looks identical or very similar to the shape of the car being copied. Secondly, only certain parts of a car could be copied, like the distinctive shape of the headlights, or the front grille.

Firstly, with respect to passing-off and unlawful competition, in South Africa, DaimlerChrysler tried to obtain an interdict to prevent the Afinta Motor Corporation from manufacturing or distributing a bus which looked confusingly similar to the DaimlerChrysler Mercedes Benz "Sprinter" bus. The court ruled in favour of DaimlerChrysler. The decision in this case made it clear that the general principles of passing-off and unlawful competition do apply to the overall shape of a motor vehicle. In terms of this decision, in cases where merely a certain part of a car is copied, it is unlikely that one would succeed on the basis of passing-off, unless the copied part is particularly distinctive.

It is important to note that in the DaimlerChrysler case a different trade mark (i.e not the Mercedes Benz trade mark) was applied to the bus with a similar shape to the "Sprinter" bus. Mercedes Benz is a well-known trade mark and the court said that because the imitation vehicle bore a different trade mark ("AMC") which was not well-known, the public may think that the imitation vehicle was "another horse from the same stable." According to the DaimlerChrysler case the use of a different trade mark on the copied vehicle would not necessarily avoid liability under passing off principles. To gain the right perspective, it must be pointed out that the vast majority of purchasers of cars would buy a car because of a particular brand name and would not be confused by cars with similar shapes bearing other brand names. It is therefore not likely that purchasers of vehicles would be persuaded to buy a car with a similar shape if a different trade mark was applied to the car. In other words, a loyal BMW buyer would not buy a car that looks like a BMW but is actually called a CNX. A car is simply too expensive to think that a shape alone would confuse buyers. The outcome of the DaimlerChrysler case could perhaps be supported to a greater extent when reliance is placed on the general ground of unlawful competition, in particular as developed in the Schultz case, which establishes that it may be unlawful to base your product’s appearance totallly on that of another product. The application of this principle is however not without difficulty.

A second remedy that is available is copyright infringement. There are certain kinds of works, or objects and articles, which enjoy copyright protection, provided that certain criteria are met. The Copyright Act’s definition of "artistic works" includes drawings of the shape of a car, or certain parts of a car. The definition of artistic works specifically includes drawings of a technical nature and engineering drawings.

A relevant provision of the Copyright Act for the purposes of this discussion is section 15(3A). This section deals with the situation in which three-dimensional reproductions of an artistic work are made available to the public by or with the consent of the copyright owner. The section provides that the copyright in the artistic work shall then not be infringed if any person, without the consent of the owner, makes or makes available to the public three-dimensional reproductions of the original three-dimensional reproduction, if the original authorised reproductions have a primarily utilitarian purpose and were made by an industrial process. Note, however, that copying the drawings would amount to copyright infringement.

What this essentially means is that if a manufacturer has produced three-dimensional reproductions from drawings and another manufacturer then reproduces those authorised reproductions, the second manufacturer’s conduct will not amount to infringement. It is important to note that this is only the case if the original authorised reproductions have a primarily utilitarian purpose and were made by an industrial process.

There can be little doubt that cars are made by an industrial process, but whether or not they primarily have a utilitarian purpose will depend on the mindset of the buyer. Millionaires might see cars as the ultimate toy or luxury item, while the rest of us will see cars simply as modes of transport. Despite the very relevant aesthetic considerations that so often come into play when purchasing a luxury car, the primary object when buying a car is transportation and it is suggested that a car therefore has a primarily utilitarian purpose. This means that reproducing these cars would not amount to copyright infringement. Car parts, of a non-utilitarian nature can, however, qualify for copyright protection.

Of relevance, thirdly, are the provisions of the Designs Act of 1993. This Act grants a statutory monopoly to the proprietor of a design in the shape, pattern, configuration or ornamentation of the article. An application to register a design is based on drawings, photographs, or diagrams which illustrate the shape or appearance of an article. There are two kinds of registered designs, namely aesthetic and functional designs. Aesthetic designs are granted for the appearance of articles and are judged solely by the eye. Protection in the case of aesthetic designs lasts for a maximum period of 15 years.

Functional designs are registered for the appearance of articles of which the shape is necessitated by the function the article has to perform. It often happens that an article eligible to be registered as a functional design will have elements of aesthetic appeal and can be registered both as an aesthetic and functional design. Functional designs remain in force for a maximum period of 10 years. While the limited period of protection may appear to be a negative aspect, because cars could be "fashion" type items the time frame in which other manufacturers would want to copy the shape of a car could, arguably, also be limited to the period in which consumers would want to buy that car. This will obviously apply to a far lesser extent to exotic vehicles.

The essential requirement for registration of a new design is that the article in question must be new at the date at which application is made for registration.

"New" means that the design has never been made available to the public anywhere in the world. The Designs Act provides, however, for a grace period of six months for registering the design from the date on which the design was first released or made available to the public. If the design application is filed at most six months from the release date, it is still considered new.

Once a design is registered, the proprietor of that design is entitled to prevent anybody from making unauthorised use of the design or something which is not substantially different from the registered design.

Instead of registering a design for the shape of an entire car, a manufacturer may also decide to register only a certain distinctive part or parts of that vehicle. On a certain car the lights may be the distinctive feature that would be susceptible to copying and then one could choose to register a design for only the shape of the lights. Another example is the distinctive shape of a grille, which has already been the subject of design registrations. One must bear in mind, however, that in terms of the Designs Act, spare parts for cars, amongst other things, cannot be registered as functional designs. This provision does not affect the protection afforded to the aesthetic features of spare parts. There is, however, a lack of clarity in our law as to what constitutes a spare part.

Copying is said to be the most sincere form of flattery, but should a manufacturer of cars decide he would not like to be flattered in this way, various intellectual property laws could thus be of assistance to him, so as to prevent a competitor getting a free ride!