On 22 January 2013, the United States Patent and Trademark Office registered US trade mark 4,277,914 in the name of Apple Inc. for the design and layout of their retail stores.

This recent move by Apple Inc. to get intellectual property protection for their store layout has drawn interest from all corners of the world. Although Apple Inc. was not the first company to look to registered intellectual property rights to prevent their competitors from copying the look and feel of their retail stores, this move by them appears to have sparked a renewed interest in the possibility of obtaining protection for interior designs.

When seeking protection for a particular interior design the starting point is to consider which form of intellectual property will be relied upon to provide the most effective protection for the retailer. Patent rights are generally not an option as they protect the underlying inventive concept of a technical invention, criteria which the interior design of a store does not meet. It is for this reason that one has to turn to other forms of intellectual property rights, such as trade mark rights in the example of Apple Inc. According to trade mark law, to get protection the trade mark must be capable of distinguishing the goods and/or services of the applicant from that of its competitors. The question naturally follows whether a particular interior design of a retail outlet is sufficiently distinctive to qualify as a registerable trade mark. In the case of Apple Inc.’s retail stores there could probably be a strong argument made that customers do associate their store layout with their services and, accordingly, the store layout itself is capable of distinguishing the Apple brand from other brands.

However, this might not always be the case. Does this mean that the creative efforts put into interior designing are not capable of being protected if the final design is not distinctive? Not necessarily. Please meet the registered design.

The registered design is lesser known than its big brothers, namely the patent and trade mark. By way of introduction, the registered design is a form of intellectual property that protects the appearance of an article. Unlike patents, it does not only relate to technical inventions and, unlike trade marks, it is not required to be capable of distinguishing one brand from the next. Although there are two types of designs, aesthetic and functional, interior designers will almost always be interested in an aesthetic designs as it protects those features of a design which appeal to the eye, irrespective of its aesthetic quality. As long as the design is new and original it can be protected by filing an application for a registered design with the South African designs office. In short, a design is considered new if it is not known anywhere in the world while it is considered original if it is derived from the work of the designer and not simply copied from an earlier design.

Traditional views on registered designs included a very strict interpretation of what qualifies as an article which is protectable in terms of design law. Without digging too deep into the legal issues, our Designs Act requires that the design be applied to an article of manufacture. However, there does not seem to be any clear understanding of what exactly this requirement involves. Although it has traditionally been seen as a requirement that the article must be at least tangible, relatively recent changes in international design law would suggest that the boundaries of traditional thinking must be expanded into the realm of intangible articles. To understand this paradigm shift it must be understood that, similarly to trade marks, registered designs are classified into various classes and are only enforceable in the class in which the design is registered. Each class comprises a fairly comprehensive list of articles which are covered by that particular class. It is as a result of recent changes in this classification system and, in particular the introduction of new class 32, that the traditional views on designs are challenged. Unlike the other classes, design class 32 does not only cover tangible articles but instead protects get-up, graphic designs, graphic symbol, logos, ornamentation and surface patterns.

It is the inclusion of get-up that is of particular interest to interior designers and companies such as Apple Inc. who values the look and feel of their retail stores. Considering that in the Oxford English dictionary get-up is defined as “a style and arrangement of dress, especially an elaborate or unusual one”, it is clear that it does not fit into the traditional views on what constitutes a protectable article in terms of design law. However, in the case of, for example, a franchise, the interior design of all of the stores is required to be identical. In a sense the “design” is multiplied and consistent throughout the franchise chain. Therefore, if a more creative interpretation is given to the definition of an article it could definitely be argued that South African design law extends to get-up.

The extension of design law to include get-up has certainly opened a new door to interior designers and companies alike who wishes to secure registered rights for their creative efforts. By filing an application for a registered design they could get 15 year’s protection for a particular design. This might not measure up to the possibly indefinite term of trade mark protection, but given that trends change rather quickly it is believed that a term of 15 years would be more than adequate. In fact, it is as a result of this rapid rate of change in trends that registered designs could become a very valuable asset in an IP portfolio. The owner of the design could obtain design rights within a year and sometimes within a few months of filing the design application. This is significantly less than the period of about two years when registering a trade mark. More importantly, there is also no onus on the owner to show that the design is capable of distinguishing its goods and services form that of its competitor. It could very well be a lot easier to get quick and effective protection using registered design rights compared to trade mark rights.

Returning to the example of Apple Inc.’s trade mark for its store layout, it is believed that another route available to them was that of the registered design, at least in terms of South African law. Having said that, it is not always a question of the one or the other. Given the significant differences in the nature of design rights and trade mark rights there would probably be a lot of value in obtaining both forms of protection, where possible. And where this is not possible, interior designers should at the very least not disregard the registered design.

This article was first published in the Design Times, Issue No. 48. Compiled by: Herman van Schalkwyk