Section 20(1) of the South African Designs Act 195 of 1993 states that 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, so that he shall have and enjoy the whole profit and advantage accruing by reason of the registration.

Therefore, in design infringement proceedings, the Court will have to determine whether or not the alleged infringing article is the same or substantially similar to the design.

A design application includes, amongst others, a definitive statement which sets out the features of the design for which protection is claimed, as well as a set of drawings illustrating the design. Definitive statements currently used by many practitioners today are of the omnibus type and may, for instance, read as follows: “The features of the design for which protection is claimed include the shape and/or the configuration of a container, substantially as shown in the representations.”. As set out in Homecraft Steel Industries (Pty) Ltd v SM Hare & Son (Pty) Ltd 1984 (3) SA 681, the measure of novelty in a design’s appearance will determine its ambit of monopoly. In other words, the scope of a registered design’s protection is dependant on how close the closest prior art is. The Court will therefore have regard to the definitive statement and the drawings of the design, as well as the closest prior art, in order to determine whether or not the alleged infringing article is substantially similar to the design.

When filing a registered design application for an article with a relatively fixed configuration, such as a tea cup or a chair, the set of drawings which accompanies the design application will illustrate the article for which protection is claimed from different angles and the definitive statement will ordinarily be similar in form to the example given above.

However, a potential problem arises when the article has more than one configuration, e.g. an open configuration and a closed configuration, which, in each configuration, has certain unique, visually appealing features. A good example in this case may be a “slide-open” or “flip-open” mobile telephone which has a certain appearance when in a closed configuration and another appearance when in an open configuration. The question now is, should one file a single design application which includes drawings which illustrate both configurations, or is it safer to file two separate design applications, one for each configuration?

From a cost perspective it is obviously cheaper to file a single design application than filing two. However, will the filing of both configurations in one application not have an impact on the scope of the design’s protection?

As mentioned earlier, during infringement, the Court will compare the design with the alleged infringing article to determine whether or not they are substantially similar. In Clipsal Australia (Pty) Ltd v Trust Electrical Wholesalers [2007] SCA 24 (RSA), the Court stated that the proprietor of a design can choose to assert a design right in the whole or any part of his article by trimming his design right claim to what he requires protection for. Therefore, if the proprietor does not specify in the definitive statement a particular part of the article for which protection is claimed, it means that the design of the article, as a whole, has to be considered for the purposes of infringement.

Say, for example, a proprietor files a single design application for both configurations of a flip-open mobile telephone and uses the omnibus type wording mentioned above for the definitive statement, i.e. “The features of the design for which protection is claimed include the shape and/or the configuration of a mobile telephone, substantially as shown in the representations.”. During infringement proceedings, the Court will then have to determine whether or not the alleged infringing article has a substantially similar shape and/or configuration to the design as illustrated in both its open and closed configurations. It may therefore be argued that if the alleged infringing article looks substantially similar to the design in closed configuration, but quite different in open configuration, then the alleged infringing article might not infringe the design, since the design, as a whole (and not only one configuration thereof), needs to be compared to the alleged infringing article. The protection may therefore not be limited to one specific configuration. Based on the above reasoning, it can then be argued that the filing of one design application for two configurations may unduly limit the scope of protection for the design.

To counter this argument, the definitive statement may be altered to claim protection for each configuration individually. E.g. the definitive statement may read “The features of the design for which protection is claimed include the shape and/or the configuration of a mobile telephone in a closed configuration and/or an open configuration, substantially as shown in the representations.” By adding the underlined wording, the design claims protection for each configuration individually, and may therefore overcome the above argument. However, by claiming protection for both configurations individually, protection is, in a sense, claimed for two designs (one for the open configuration and one for the closed configuration). Although a design registration may not be revoked based on the fact that it claims protection for more than one design, it may pose a potential problem when trying to enforce it. One of the main requirements for design protection is that the design must be novel. A design claiming protection for two configurations must therefore arguably be novel in both configurations. Following this argument, if a proprietor therefore sues an alleged infringer for infringing his design as illustrated in its open-configuration, an alleged infringer may attack the validity of the design based on the fact that the design, as illustrated in its closed configuration, lacks novelty, by providing prior art which is substantially similar to the design in closed configuration (irrespective of how it looks in an open configuration). Although it may be possible to amend a design application before/during infringement proceedings to limit the design’s scope of protection to only one of the configurations, it may end up unduly delaying the infringement proceedings.
 

To conclude, practitioners must be careful to approach design protection for an article with more than one configuration in the same way as for articles with fixed configurations, as it could impact not only the scope of the design’s protection, but also the enforceability of the design. Based on the above arguments, separate design applications should preferably be filed for each configuration, if the client’s budget permits it. If not, then careful consideration should be given when drafting the definitive statement to ensure that the scope of protection of the design is not unduly limited.

Written by Danie Pienaar – Professional Assistant – Patent Department – Adams & Adams

Verified by Alexis Apostolidis – Partner – Patent Department – Adams & Adams