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INFORMATION FOR SOUTH AFRICANS, ON OBTAINING PROTECTION FOR DESIGNS
The proprietor of a South African registered design has the right to stop other persons, for the duration of the registration (up to ten or fifteen years), from making, importing, using or disposing of (e.g. selling) any article which embodies that design, and which is in the same class.
A registered design protects the appearance of an article, i.e. the pattern and/or ornamentation, and/or the shape and/or configuration of an article. The article must be an article of manufacture. Design protection can even be obtained for part of an article, provided the part is manufactured separately. It is also possible to obtain design protection for a set of articles, i.e. a number of articles of the same general character which are ordinarily on sale together, and each of which embodies substantially the same design (e.g. a cutlery set). A design which can be registered for protection is one which is (a) new and (b) original or not commonplace in the relevant “art”. The following are examples of designs for which protection is obtainable by way of a South African registered design.
- Shapes of food such as pastas;
- articles of clothing;
- furniture;
- textile fabrics;
- suitcases and umbrellas and other travel goods;
- crockery and cutlery and other household goods;
- tools and hardware;
- packages and containers for the transport or handling of goods;
- clocks, watches and measuring, checking and signalling instruments;
- jewellery, flags, and other articles of adornment;
- vehicles and other means of transport or hoisting;
- equipment for production, distribution or transformation of electricity;
- recording, communication or information retrieval equipment such as data processing equipment, radio amplifiers, equipment for recording or reproducing sounds or pictures;
- engines, pumps, and other machines;
- cameras, projectors and other photographic, cinematographic and optical apparatus;
- musical instruments;
- printing and office machinery;
- pens and pencils and other writing instruments, and other stationery and office equipment, and artists’ and teaching materials;
- signs, vending machines and other sales and advertising equipment;
- games, toys, tents and sports goods;
- traps and articles for destroying pests, weapons, arms and articles for hunting shooting and fishing;
- solid fuel, and equipment for sanitation, heating, ventilation, and air-conditioning;
- medical and laboratory equipment;
- buildings, steps, ladders and scaffolds, and building units and construction elements;
- candlesticks, torches, lamps, vehicle lights, and other lighting apparatus;
- cigars, cigarettes, ashtrays, pipes, and other smokers’ supplies;
- wigs, hairpieces, pharmaceutical and cosmetic products, toilet articles and apparatus;
- fire extinguishers, and other devices and equipment against fire hazards, or for accident prevention and for rescue;
- saddles, cages, and other articles for the care and handling of animals;
- machines and appliances for preparing food or drink.
Secrecy is of paramount importance if you are considering obtaining registered protection for your design. South Africa, and indeed all of the important countries in the world, require that a design must be “new” or “novel” in order to qualify for registered protection. The various countries have different novelty requirements. In South Africa, if you make your design “available to the public” anywhere in the world, before you file a design application for the invention, you destroy registrability of the design, i.e. you will no longer be able to obtain valid design protection for your design in South Africa and many other important countries. In this regard you should bear in mind that telling a single person about your design could be a novelty-destroying event. If you cannot avoid disclosing your design to a third party, then you must ensure that the third party understands that you are making the disclosure to him in the utmost confidence.
If you make a design, and the design is disclosed, used or made known by a third party, you are not barred from obtaining ZA design protection on the ground of lack of novelty, provided you provide proof (i) that the third party’s knowledge, and the matter disclosed or used by him, were obtained from you without your knowledge or consent; and (ii) that you applied for and obtained protection for your design as soon as possible after learning of the disclosure, use or knowledge by the third party.
However, it is always the better option to observe strict secrecy about your design until a design application accompanied by drawings or photographs of your design, is actually filed at the South African Designs Office.
There is no such thing as a “worldwide design”. In other words, it is not possible, by way of a single design, to achieve worldwide protection. Separate design protection (with few exceptions) has to be obtained in each country of the world in which design protection is required. This can be problematic because the other countries in the world also have novelty requirements which have to be satisfied in order for a design to be registrable there. However, most of the countries in which you are likely to require design protection, are members of the so-called “Paris Convention” which is also known as the “International Convention”. The member countries recognise, for the purpose of establishing a priority date, a design application filed in another country that is also a member of this Convention. Thus, a single design application filed at the South African Designs Office, can secure for you, for a period of six months, an option also to file design applications in other countries such as the United States, the United Kingdom, Japan, Australia, Germany and other European countries, etc.
Therefore, usually the best course of action is to keep your design a secret, and as soon as possible to file a design application accompanied by drawings or photographs of your design, at the South African Designs Office. This will have the effect (1) of giving you a six month “option” to apply for design protection for that design in all of the other countries in which you might be interested (and which countries will recognise your filing date in South Africa), and (2) of permitting you immediately to try and exploit your design without fear that the accompanying publicity will destroy registrability.
You can secure a six-month “option” to file design applications in respect of all the important countries in the world, by filing a single design application at the South African (ZA) Designs Office. This single ZA application must be accompanied either by drawings or photographs of the design. There is a single Designs office in South Africa, and it is situated in Pretoria. You and other members of the public are permitted to visit the ZA Designs Office, to pay the prescribed fees, and to file your own design applications; you do not need a patent attorney or, indeed, any attorney, to assist you.
The “proprietor” of a design can apply for a South African design registration. The proprietor can be
- the author of the design (i.e. the person who made the design);
- another person on whose behalf the design was made;
- another person for whom the author or his employee made the design in terms of an agreement; or
- another person who has acquired the design from the author.
The ZA Registrar can ask such other persons to provide documentary proof (e.g. an assignment of invention), that they are the proprietors of the design.
Neither the Designs Act, nor the Regulations, prescribe that the proprietor of a design must make use of the services of an attorney or other agent to assist him in obtaining protection for his design. However we recommend that you obtain assistance in drafting the definitive statement for the application. The definitive statement is used to interpret the scope of the protection afforded by the design registration.
Furthermore, it is important that the design application is filed in the appropriate class, bearing in mind that the scope of protection afforded by the registration is limited to the class in which the design is registered.
If you require assistance in filing your design application, a meeting for discussing the design would be preferable but, in any case, you should furnish the following
- A brief description of the so-called “prior art”, i.e. known articles in the same category of articles to which your design is to be applied. This helps to identify the novel feature(s) of your design, and hence to draft the “definitive statement” which has to be included in the design application.
- Drawings and/or photographs of the design, or of an article which embodies the design.
After your application for design protection is granted by the ZA Registrar, it is necessary to pay annual “renewal fees”, starting on the third anniversary of the date on which you filed the design application at the ZA Designs office. An extension (up to six months) is obtainable, subject to payment of an extension fine. If the design registration is not renewed as prescribed, the registration will lapse. However, if the omission to pay the renewal fee was unintentional, it might be possible to have the registration restored provided that you apply for restoration as soon as possible after you realise that the registration has lapsed.
Corrections of clerical errors in any documents which are on file at the ZA Designs Office, can be corrected at any time in terms of the Designs Act and Regulations. Furthermore, other corrections and/or amendments are allowable before and after grant of the design application, in certain circumstances.
We can arrange to meet with you at a venue in Johannesburg or in Pretoria.
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