Registered Designs

A registered design is a form of monopoly right that is granted on the outward appearance of an article. It protects the way an article looks as opposed to the underlying inventive concept. Because they provide enforceable rights quickly, registered designs are very effective in preventing the blatant copying of a design.

The maximum term of a registered design will differ from country to country.  In South Africa, an aesthetic design registration has a duration of 15 years, while a functional design registration has a duration of 10 years, subject to payment of renewal fees.

In each case, renewal fees are payable from the third year calculated from the date of filing of the application, the priority date, or the release date, whichever is earliest, and annually thereafter.

Some design legislation differentiates between aesthetic and functional designs.

An aesthetic design protects the features of a design that appeal to and are judged solely by the eye; typically, those that influence consumer selection based on visual appeal. A functional design protects the features that are necessitated by the function the article performs.

A single design may have both aesthetic and functional features, which need to be protected by separate design registrations.

The specific requirements will depend on the country of registration but generally, a design must be novel, compared with all known designs in the world.

To be registrable in South Africa, an aesthetic design must also be original, which means that it must be a result of your own work and not copied from somewhere else; and a functional design must not be “commonplace”, which means that everyday and obvious variations of known designs are not registrable.

Also, there must be an intention to multiply the articles embodying the design by an industrial process. Once-off articles are excluded from design protection and enjoy protection under copyright instead.

If you are interested in applying for a registered design, please contact us for more information.

Considering that absolute or worldwide novelty is usually a requirement, any design available to the public anywhere in the word is considered to be prior art.

This is why we suggest that novelty searches be conducted prior to filing an application for a registered design. There are dedicated databases like Google Patents, and the websites of patent offices and organisations, to assist with this.

Once your design application has proceeded to registration in a particular country, you are granted, for the duration of the registration, the exclusive right in that country to exclude others from performing certain acts in relation to that design.

In South Africa, for example, this is making, importing, using or disposing of any article that embodies the design or a design that is not substantially different from it. So a registered design allows you to control the way the design is used. This includes the right to charge royalties for its use and to prevent competitors from using it or allowing copies of it to enter the market.

To file an application for a registered design, we would need:

the details of the owner of the design;

an indication of the article to which the design is applied; and

representations of the design in the form of drawings, renderings or photos.

No, there is no requirement around the stage of development at which a design can be registered, but it is important to note that protection is only afforded to the design as shown in the drawings accompanying the design application. This means that if the design shown in the design application is not consistent with what it in the market, there is a risk that the registered design will not adequately protect its commercial embodiment.

Design protection may be limited articles of manufacture but, at the same time, there is no clear definition of what constitutes an article of manufacture. One view is that only tangible articles are capable of enjoying protection while an opposing view is that intangible articles may also be protectable. Considering the developments in technology and global design law a less restrictive interpretation is preferred so as not to exclude modern, intangible articles such as screen layouts, icons, holograms and so forth.

An important difference between patents and registered designs is that there is greater flexibility regarding the novelty requirements for registered designs. This is because they may allow for limited disclosure to have taken place before an application is made for the design registration.

In South Africa, for example, a design registration will not be compromised as long as an application is made for registration within six months of the design being released to the public. Release can take a number of forms, including publishing the design or selling products that incorporate the design. But there are drawbacks to using this procedure, so we recommend that a design application be filed before public disclosure is made.

If your registered design is infringed, you’re entitled to the relief, which may include:

an interdict;

surrender of any infringing product or any article or product of which the infringing product forms an inseparable part; and

damages or a reasonable royalty that would have been payable by a licensee in respect of the registered design.

Design rights are territorial and, generally speaking, a separate design application must be filed in each country where design protection is required (within six months of the first application being filed).

There are regional systems that allow for a single design registration to cover a group of countries. In Africa there are two regional systems, ARIPO and OAPI, which provide effective protection in 16 and 17 member countries respectively.

Protection can also be obtained throughout the European Union by filing a single application for a Registered Community Design (RCD) in Europe.

No new matter may be added to any application for a registered design or design registration. It is therefore important to ensure that the design shown in the drawings accompanying the application is an accurate representation of the commercial product. Changes that do not introduce new matter may be made, depending on the nature of the changes and whether they are made before or after registration.

Spare parts for machinery, vehicles and equipment may specifically be excluded from being registered as functional designs. This exclusion would not, however, prevent the obtaining of valid aesthetic design protection for all spare parts.

If you are interested in applying for a registered design, please contact us for more information.