The following information is supplied for the convenience of our clients or potential clients and is to be considered as a brief and simplified outline only regarding details concerning a South African design application and matters concerned herewith.
Procedure for Obtaining Design Protection in South Africa
The process for obtaining design protection begins by filing a design application at the South African Designs Office in Pretoria. It is possible to register two types of designs in South Africa, namely an aesthetic design and a functional design.
An aesthetic design is defined as any design applied to any article, whether for the pattern or shape or configuration or ornamentation thereof, or any two or more of these features and by whatever means it is applied, having features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof.
A functional design is defined as any design applied to any article, whether for the pattern or shape or configuration thereof, or for any two or more of these features, and by whatever means it is applied, having features which are necessitated by the function which the article to which the design is applied, is to perform, and includes an integrated circuit topography, a mask work, and a series of mask works.
Accordingly, an article means any article of manufacture and includes part of an article if such a part is manufactured separately. As is evident from these definitions, an aesthetic design depends on how the design is visually perceived, and a functional design depends on visible features which have an impact on a possible function the article is to perform.
An aesthetic design must meet the requirements of being new and original to qualify for registrability. A functional design must meet the requirements of being new and not commonplace in the art in question. In both cases, the article to which the design is applied must be intended to be multiplied by an industrial process. Accordingly, a design shall be considered new if it does not form part of the state of the art immediately before the date of application or the release date thereof, whichever is earlier.
It is possible to obtain both aesthetic as well as functional design protection for the same design.
The release date is defined as the date on which the design was first made available to the public on authorization of the proprietor of the design. It should be noted that this release date is unique to designs, as a similar release of aspects of a patentable invention will destroy the novelty requirements for obtaining a valid patent for that invention. Accordingly, care should be taken in circumstances where it is desirable to obtain both patent and design protection, as the release of a design will destroy the novelty of a patent.
Accordingly, the South African Designs Act determines a grace period between the release date of a design to when an application must be made to protect that design. This period provides a person with the opportunity to obtain a registered design after the design has been made available to the public. This period is six months from the release date of the design, and two years where the design relates to an integrated circuit topography, a mask work, or a series of mask works. This grace period only offers an advantage where protection will be limited to South Africa, as it may not be possible to obtain valid design protection in most foreign countries if the design is released before filing an application
Designs are divided into 32 different classes for registration purposes. A single design application is filed in a single one of these classes. Should protection be required in a different class, a separate application must be made in that class. This has an important effect, as the protection afforded to a design is limited to the class in which the design has been registered. It is thus possible that, where a registered design is applied to an article not in a class in which the design is registered, it would not constitute an infringement of that registered design. Therefore, where an article can be applied in more than one class, separate design applications must be filed in the relevant classes. It is possible to extend a registered design to a different class after registration if done by the same applicant.
The duration for an aesthetic design is fifteen years, and ten years for a functional design, both periods subject to the payment of annual renewal fees.
The effect of a registered design is to give the proprietor thereof the sole right to have and enjoy the whole profit and advantage accruing to him by reason of the registration. Accordingly, he has the right to exclude others from making, using, importing or disposing of any article included in the class in which the design is registered which article includes that design or something not substantially different therefrom.
Furthermore, under the Paris Convention for the Protection of Industrial Property, it is possible for an applicant to claim the priority of a design application filed in South Africa when filing design applications relating to the same design in other countries which are members of the Paris Convention.
Where a design is filed in South Africa, an applicant can claim that priority date within six months when similar applications are made in these foreign countries. The most important countries, from an intellectual property viewpoint, are members of the Paris Convention. Please click here for more information, in this respect.
As of 2018, our charges for preparing and filing a South African design application are from R 8 000.00 per application. Where a design is to be filed in more than one class thereby necessitating multiple applications, a discount is applicable for subsequent applications.