The Ultimate Guide To Registered Designs In South Africa
What Is A Registered Design?
Registered designs cannot and are not meant to protect ideas. The only way to protect an idea is to register a patent in respect of that idea, however, patents can only protect novel ideas. Known ideas can only be protected, by way of a registered design, if presented in a novel shape.
Registered designs provide excellent protection against slavish copying and the protection better than copyright because of the registration of the intellectual property right. A registered design does not protect the name of the product. The name of a product is protected by a trade mark registration.
What Are The Requirements? (Part A or Part F)
In order to obtain valid registered design protection, the design must be novel and original. The novelty requirement means that no knowledge of the shape or patterning of the design must have been available to the public anywhere in the world prior to the priority date of the registration.
The Designs Act 195 of 1993 (“the Act”) differentiates between two types of registrable designs, aesthetic and functional designs (parts A and F respectively, of the Designs Register):
An aesthetic design is defined to mean any design applied to an article having features which appeal to and are judged solely by the eye.
A functional design is defined as a design having, in addition to eye-appeal, features which are necessitated by the function which the article is to perform.
Functional features of an article are specifically excluded from protection in Part A of the Register, whereas a design having both aesthetic and functional features can be registered in both Part A and Part F. Spare parts for machines or vehicles are excluded from registration in Part F of the Register, but the Act is silent on whether or not protection can be obtained for such articles in Part A and it has been accepted that designs for non-functional features of spare parts (such as motor vehicle body parts, shoe soles and the like) can be protected in Part A of the Register.
It is important to understand that copyright does not protect ideas. Copyright protects only the expression of the idea, in other words the physical form taken by the expression of the idea, such as the lines of code of a computer program or the idea expressed on the pages of a book or document (If protection is required for the underlying idea, patent protection must be sought).
What Do We Require From You To Register Your Design?
In order to enable us to assist you in preparing and filing a registered design application we require a description of the concept or design that should include, at least, the following:
- A brief description of the design and its novel features, accompanied by drawings or photographs of the design. We can get this from you by e-mail or by discussing the design with you in consultation.
- Details of any alternative forms of the design or of possible modifications thereto that you might want to introduce in future.
Our charges for preparing and filing a registered design application depend on the complexity of the design and the time it takes to prepare the application for registration. A guide in respect of our charges is available on request. We will be in a position to give you a more accurate estimate once we receive details of the design and the market-readiness of the design.
Our intellectual property department provides a full range of services relating to registration, acquisition, commercialization and protection of IP rights. If you have any questions or would like a quotation, please get in touch with our team today.
Design Searches:
In the event that some information about prior knowledge or technology (the prior art) is required, we can conduct novelty searches locally or abroad. If searches are required, we shall require your separate instructions to conduct such searches.
Possible Invalidity Of The Registered Design:
If the registered design is found to be invalid, any person can apply to have it revoked at any time during the life of the registered design. If, for instance, you take action against infringers, they may counterclaim for the revocation of your registered design. Therefore, unless you are certain that the registered design is valid, it is advisable to investigate and confirm the validity of the registered design before threats are made or proceedings are instituted against infringers.
We prepare registered design applications on the basis of information placed at our disposal by you, our client, on the assumption that our client’s assurances of the novelty of the design are correct. Neither the fact that we have undertaken to file this application nor the fact that the Registered design Office has allocated a number should be interpreted as an indication or guarantee that the design will support a valid registered design.
Disclosures, Exploitation and Possible Infringements:
Once you file a registered design application, you may exploit the design and disclose the design to others without fear of invalidating the registration of the design. But, your exploitation and disclosure of this design should be limited to details which are described and illustrated in the registration. If your disclosure of the design displays developments or improvements to the design that may have been made subsequently to the filing of the application, you should consider obtaining additional protection (an additional registered design application) before disclosing any such improvements.
In exploiting the design, you must be sure that you do not infringe the rights of others. You must, for instance, be sure that there is no prior South African registered design, patent or copyright which might be infringed by exploitation of the design. In order to be sure, you might need to conduct infringement searches. We can assist you in this regard.
If you wish to sell the design or to license others to use it, we advise you to conclude a written agreement clearly defining the terms of the sale or license. We shall gladly assist you in any such negotiations and in preparation of any agreements.
International Protection Of Your Design:
The first registered design application directed to a design automatically gives rise to certain rights internationally:
- The design is protected “provisionally” in virtually every country in the world. This means that you have the first option to file a registered design application directed to the design in foreign countries.
- In essence, each foreign application will be “back dated” to the earliest filing date.
- You exercise this foreign filing “option” by filing an application for a registered design in those countries where protection is required before the expiry of a period of 6 months from the earliest filing date. This international priority period is not extendable.