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Intellectual property and the shape of things

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Intellectual property and the shape of things

29th November 2018

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Recently one of the leading producers of soy sauce, the Kikkoman Corporation, was finally able to have its soy sauce dispenser bottle registered as a 3-D trade mark in Japan. Although the Kikkoman Corporation’s soy sauce dispenser was introduced in the market as far back as 1961, it had never been protected as a trade mark in its home country.

What does this mean for South African proprietors who wish to file a shape/container mark?

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The most important question for a proprietor is what the intention is for their shape mark. If the purpose is use of the shape for a short period of time then it is sufficient to file it according to the Designs Act 195 of 1993. However, if the intention is use over a prolonged period of time then the best way is to layer your registrations so as to have proper protection, generally along the following lines:

The Copyright Act 98 of 1978

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The Copyright Act is mentioned in passing as copyright automatically subsists in artistic works (i.e. shape marks qualify as artistic works). While ensuring that you as the proprietor are the copyright owner, the main issue with the Copyright Act is “reverse engineering”.

The Copyright Act makes it clear that once 3-D reproductions of the ‘protected’ artistic work have been made available to the public, there is no infringement of the artistic work in the event that a third party, without your consent, makes or makes available to the public 3-D reproductions or adaptations of the ‘protected’ artistic work if the ‘protected’ reproductions primarily have a utilitarian purpose and are made by an industrial process. The protection offered under Copyright is unfortunately therefore limited.

The Designs Act 195 of 1993

The Designs Act allows for the registration of shapes as either aesthetic or functional designs. The pros of registering an article under the Designs Act is that it is a faster registration process taking about 6 months, is relatively inexpensive, and is a very enforceable right once granted.

The Trade Marks Act 194 of 1993

As the Trade Marks Act allows for the registration of shapes/containers, this is how a proprietor can obtain long term protection for an aesthetic 3-D mark. Although the registration of a trade mark may take a while, it is not expensive, and it offers protection in perpetuity as a registration can be renewed every 10 years.

It is to be noted that the Trade Marks Act only allows for the protection of aesthetic shape/container marks and not of functional designs as section 10 (5) of the Trade Marks Act prevents the registration of a shape mark where any features of it are necessitated solely by the function which the shape is intended to perform, or the registration of a container or a shape where the registration of such is or has become likely to limit the development of any art or industry as per section 10 (11). In addition, it should be noted that a shape or container registration is generally filed and protected in respect of the contents sold in the container.

A cautionary word for proprietors interested in registering any shape/container marks is to be aware of what kind of protection the available intellectual property legislation affords them, and to ensure that they layer their rights in order to have the best protection as well as protection in perpetuity. The solution to finding the best protection is to speak to a qualified intellectual property attorney as a first step.

Written by Luyanda Ntuli, Attorney at KISCH IP

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