Despite various laws governing design registrations across different countries, one common requirement is novelty. A design has to be new to meet the novelty requirement, meaning it must not have been disclosed to the public before the filing date, anywhere in the world. To accommodate inadvertent or strategic disclosures, some countries provide a grace period, allowing the proprietor of a design to disclose or market a product without such disclosure destroying the design’s novelty. For example, the United States, Australia and the United Kingdom provide for a 12-month grace period while countries such as Brazil, India and South Africa provide a shorter grace period of 6 months.

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Design Registrations: South African Law

In South Africa, design protection is governed by the Designs Act 195 of 1993 (the Act). According to the Act, the term of design registrations commence on the earlier of the date of registration or the release date (s22(1)) and a design is considered new if it does not form part of the state of the art immediately before the earlier of these two dates (s14(2)). However, the design is not deemed new if an application for registration is not lodged within six months of the release date. The Act defines the release date as “the date on which the design was first made available to the public with the consent of the proprietor or any predecessor in title.” This release date serves as the base date for determining the relevance of a public disclosure. If the design was not released or the release date was not claimed or cited, the base date would be the date of lodging the application for registration.

The Western Cape Division of the High Court of South Africa recently handed down a judgment in Eva-Last Distributors (Pty) Ltd v Timmdek (Pty) Ltd and Zentia Trading (Pty) Ltd (1729/2022) [2024] ZAWCHC 126, in respect of an application for the amendment of sixteen registered designs. The proprietor, Eva-Last, sought to amend the designs by declaring or inserting release dates that had not been cited at the time of filing the applications. These amendments were filed in reaction to a revocation application filed as a counterclaim by Timmdek to an infringement action instituted by Eva-Last. The counterclaim was based on the contention that the designs were not new by virtue of having been disclosed at a public exhibition by the proprietor prior to the application date. Timmdek did not oppose the application to amend the designs. Instead, Zentia Trading, trading as Best Deck, opposed the application.

The court’s decision

The proprietor initially framed the request to insert a release date in two alternative ways. First, as an application to correct or amend the documents lodged in support of the design applications under section 26 of the Designs Act. Secondly, as an application to amend the design registrations under section 27 of the Act. The amendment application was accompanied by new declarations on Forms D3, and the cited reason was that the applicant had omitted to inform his agent about the release date. The court decided the matter on the basis of the first request and granted the amendment of documents in terms section 26(1)(b), allowing the insertion of the release date of 27 April 2016 for all sixteen designs.

In its reasoning, the court noted that the applications for design registration had been lodged on 11 August 2016, within 6 months of the release date, 27 April 2016. The court concluded that “the applicant is not requesting something to which they were not entitled from the outset.”

Following the court’s decision, the online design registers for the sixteen registered designs were updated to reflect the release date. As a result, the term of registration for these designs, which had previously commenced on the application date, will instead start from the release date. Since the release date is now the base date for determining the state of the art and assessing novelty, the public disclosure made by the proprietor at the exhibition on the release date no longer forms part of the prior art. It could be argued that, before the court’s decision, these registered designs were liable for revocation on the ground that they were not new under section 14, due to the proprietor’s prior disclosure at the exhibition.

At the time of lodging the applications for design registration, each application was accompanied by a declaration on a Form D3. These signed declarations stated that “to the best of my knowledge and belief, if a design registration is granted, there will be no lawful grounds for its revocation”. According to section 31(1)(d), a ground for revocation arises if “the application for registration contains a false statement or representation which is material, and which the registered proprietor knew to be false at the time it was made.” Since Eva-Last did not deny disclosing the designs at the exhibition in question, this declaration could not have been true when it was made. However, the court regarded this issue as relevant for deciding a revocation application and not a determining factor in deciding the amendment application. The judgment leaves open whether amending the documents to include the release date and submitting new declarations on Forms D3 could cure any material misrepresentation in the original declarations.

If the court were to decide a revocation application, challenging registration of the sixteen designs on the ground of section 31(1)(d), it would first need to determine whether the initial declarations on Forms D3 contained a material misrepresentation due to the omission of the release date. Secondly, the court would need to assess whether the proprietor knowingly omitted this information. Ultimately, the outcome would depend on the specific facts of the case, including whether the proprietor was aware of the omission.

Guidance from patent law decisions

Although there is no direct precedent in design law dealing with overcoming material misrepresentation by way of amendments, guidance can be found in patent law decisions. In Gallagher Group Ltd and Another v IO Tech Manufacturing (Pty) Ltd and Others 2013 BIP 45 (CP), the court held that a patentee who, with knowledge, makes a materially false representation cannot simply avoid the consequences of such misrepresentation by amending the patent specification. According to Kollapen J, “the provisions of s 61(1)(g) can only mean that the misrepresentation must be assessed at the time the statement was made. It would offend both the clear language of the section and the policy imperatives ensuring good faith and honesty on the part of patent applicants if it were possible to amend out of the consequences of a material misrepresentation made knowingly.”

Section 61(1)(g) of the Patents Act 57 of 1978 is worded similarly to section 31(1)(d) of the Designs Act. However, section 61(1)(g) of the Patents Act also includes a misrepresentation that the patentee “ought reasonably to have known” was false. Therefore, while a negligent misrepresentation could fall under this ground for patent revocation, the same would fall outside the ambit of section 31(1)(d) of the Designs Act for revocation of registered designs. Thus, while it is likely that our courts would find patent law precedents persuasive in deciding revocation of a registered design on the ground of material misrepresentation, it would also likely consider the nuances in the wording of the two statutes.

In summary, the current position is that South African design registrations may be amended to include a release date, even after grant. Whether such amendment or the registration itself would survive a revocation challenge based on the ground of section 31(1)(d) remains to be seen. Therefore, it is strongly recommended to cite the release date at the time of filing. Doing so minimizes the risk of future disputes, particularly those concerning potential misrepresentation arising from the omission of this critical information.