CONVENTIONS

South Africa (ZA) is a member of the “International Convention”, and a ZA application filed within six months of a first application for a design or similar right in a convention country, is eligible to claim priority from said first application.

DESIGNS REGISTER – PART A OR PART F

An aesthetic design has to be registered in Part A of the Designs Register, and a functional design in Part F. A design having both aesthetic and functional features can be registered in both Part A and Part F. The maximum term for a Part A registration is 15 years, whereas a Part F registration has a maximum term of 10 years. Functional features of an article are specifically excluded from protection in Part A of the Register. On the other hand there is no such specific exclusion of aesthetic features, from protection in Part F. It is possible, therefore, that a single registration, in Part F of the Register, would provide design protection for both aesthetic and functional features of an article. However, we believe that it would be prudent, and therefore preferable, to file an application in each of Part A and Part F of the Designs Register in order to protect both the aesthetic and functional features of a single article.

The Act specifically provides that a valid design registration cannot be obtained, in Part F of the Register, for functional features of a spare part for a machine, vehicle or equipment. However, the Act is silent on whether or not protection can be obtained for such articles in Part A of the Register, and it would appear, therefore, that a design for non-functional features of a spare part (e.g. a motor vehicle body part) can be protected in Part A of the Register.

NOVELTY AND ORIGINALITY

For an aesthetic design to be eligible for protection in this country, it has to be new and original; a functional design has to be new and not commonplace in the art in question, if it is to be protectable in terms of the Designs Act.

A design is “deemed to be new if it is different from or if it does not form part of the state of the art immediately before” the “effective date”. “Effective date” is not a term used in the Act, and is, in fact, the priority date, the date of filing in South Africa, or the release date (see definition below), whichever is the earliest. If the effective date is the release date, in order to satisfy the novelty requirement, the design application must be filed in South Africa within six months of the release date, irrespective of whether or not the South African application claims Convention priority. If the design is an integrated circuit topography, or a mask work, the release date deadline is extended from six months to two years.

The state of the art comprises all matter which has been made available to the public anywhere in the world, by written description, by use or in any other way. The state of the art also comprises all matter contained in another South African application which has an earlier effective date, irrespective of whether or not the other application has been made available to the public by the time an application for the design in question is filed.

Release Date

The term "release date” is the date on which the design was first made available to the public (whether in South Africa or elsewhere) with the consent of the proprietor or any predecessor in title.

RIGHTS AFFORDED BY A REGISTERED DESIGN

Section 20 of the Act provides that the registration of a design affords the proprietor, the right to exclude other persons from making, importing, using or disposing of any article included in the class in which the design is registered and embodying the design or a design not substantially different from the registered design. Schedule 3 of the Regulations to the Designs Act lists the classes in which a design can be registered, and the selected class has to be designated in the prescribed application form. Only a single class can be designated per application.

CLASSIFICATION

Because the protection afforded by a registered design is restricted to articles which fall within the class in which the design has been registered, the selection of the class(es) for the design application(s) is of the utmost importance. If a design can be applied to articles which are categorised in different classes, then a separate design application should be filed in each of those different classes.

NO DIVISIONALS

A South Africa design registration is in respect of a single article or embodiment of the design. Furthermore, the Designs Act does not provide for the filing of a divisional application. Hence, a separate design application has to be filed for each article/embodiment of the design for which protection is required, and this decision cannot be deferred until after the filing deadline.

FORMAL REQUIREMENTS FOR FILING AN APPLICATION

A registered design application requires the following documents:

1. Prescribed application forms signed by the applicant or his attorney in South Africa (ZA);
   
   
2. A declaration on a prescribed form (Form D.3), which has to be signed by the applicant or, in the case of a corporation, by an authorised official of the applicant;
   
   
3. Representations - six identical representations or identical sets of representations (of which four are required for filing at the Designs Office);
   
   
4. A "definitive statement" which is, in effect, a novelty statement, and is used to interpret the scope of protection afforded by the design registration;
   
   
5. An indication of (a) whether the application is being filed in Part A or in Part F of the Designs Register, and (b) the class in which the application is being filed;
   
   
6. A "brief statement" not exceeding 150 words – and which is similar to a patent abstract, and is published with a selected representation of the design, after the design has been registered;
   
   
7. A certified copy of the priority application if the ZA application is claiming priority in terms of the Paris Convention;
   
   
8. An assignment of priority rights if the applicant of the priority application is not the same as the applicant of the ZA application.

The only documents required to be filed with the application are (1) the prescribed application forms signed by one of our patent attorneys and furnishing (i) the applicant's name and address, (ii) the articles to which the design is to be applied, and (iii) the definitive statement, and (2) one representation or one set of representations. The election of the part of the register (ie Part A or Part F) has to be furnished within 14 days of the ZA filing date. All other requirements mentioned above have to be filed within six months of the ZA filing date.

In the event of the applicant being a person other than the author of the design, it is not essential that documentary proof be filed that the applicant has acquired the rights to obtain registered design protection for the design in South Africa. However, the Registrar has a discretion as to whether or not to require such proof and, from time to time, issues an official action calling for a written assignment of design rights from the author to the applicant.

In Cases of Urgency

A filing date for a South African application claiming Convention priority, can be secured by way of an "informal application" provided the following information is furnished:

1. the applicant's name and address;
2. the identity of the articles to which the design is to be applied;
3. the country, number and date of filing of the priority application in the Convention country (i.e. the application from which priority is to be claimed);

provided that, within 14 days of the date of filing of the informal application, (a) a copy of the representation or set of representations is filed, (b) the definitive statement is provided, and (c) Part A or Part F of the Register is designated.

EXPLANATORY STATEMENT

A design application for the registration of a functional design for an integrated circuit topography or a mask requires an explanatory statement which has to refer to the function and operation of the integrated circuit topography or mask work.

For applications for all other design works, an explanatory statement is optional. If it is filed, it may refer to features of the article to which the design is to be applied including the function and/or the method or principle of construction of the article. It is important to bear in mind that if an explanatory statement is filed, it may be used to assist in interpreting the scope of the protection afforded by the design registration.

HOW LONG FOR REGISTRATION?

An application for registration of a design, generally proceeds to grant within six months of the filing date in South Africa provided, of course, that all documentation has been timely filed.

PUBLIC INSPECTION OF OFFICIAL FILE

The official file falls open to the public upon publication of registration (ie after grant). Publication of registration can be delayed, if the applicant so requires, for a limited period, by way of an official request to the Registrar.