IP Registrations: Registered Designs
Design protection extends exclusively to the pattern, shape, ornamentation and/or pattern of a design that is applied to an article.
South Africa offers broader registered design protection than many other countries, in that it recognises two distinct types of design, namely:
- Functional Designs: as the name implies, functional design registrations are appropriate for cases in which features of a design are necessitated by the function that the article is to offer (this is comparable to the registered industrial designs that are available in many other countries); and
- Aesthetic Designs: such design protection extends exclusively to the aesthetic appearance of an article to which the design is applied.
It is possible to obtain both functional and aesthetic design registrations in respect of the same design.
The absolute novelty requirement, that is well-known in patent law, is also applied to design law, although with certain very important differences. In addition to the novelty requirement, an aesthetic design is also required to be "original", while a functional design must be new or "not commonplace in the art".
Provided that renewal fees are paid, an aesthetic design has a maximum registration of 15 years, while for a functional design the maximum duration is 10 years.
At Margo® Attorneys, Inc. our service offerings include:
- the preparation, filing and prosecution of patent, design and trade mark applications, in South Africa and abroad;
- IP searches: including patent & design novelty searches, and name searches in all disciplines;
- IP litigation: infringement proceedings, opposition proceedings & responding to objections, passing-off and unlawful competition, and anti-counterfeiting procedures.
- Commercialisation and preparation of commercial agreements, including licences, franchise agreements and technology transfer & assignment agreements.
- IP audits; and
- Cyberlaw and domain name registrations: including the resolution of disputes in this field.
Types Of Registered Designs
South Africa allows for the registration of two kinds of designs:
| Aesthetic Designs |
which protect features of pattern, shape, configuration and/or ornamentation, and which appeal to the eye (eg: a jewelry box) |
| Functional Designs |
which protect features of pattern, shape and/or configuration, and which are necessitated by the function that the article performs (eg: the curved blades of a surgical tool; arrangement of blades in an impeller) |
It is possible to file applications for both an aesthetic design & a functional design in respect of the same article (if appropriate).
Novelty Requirements
Absolute novelty is required for both Aesthetic Designs and Functional Designs. However, South African law permits a 6 month grace period from the date of the first public disclosure before a design application may be filed (this is known as the “release date”). Novelty is not destroyed if the application is filed within 6 months from the release date.
A design is novel if it is different from, or does not form part of, the state of the art immediately before the earliest of:
-
★ the earliest priority date claimed (in the case of convention applications);
★ the date on which the application is lodged at the South African Designs Office (non-convention applications); or
★ the release date.
Filing Requirements
| Name & physical address of applicant |
| Description of article to which design is applied (eg: "hairbrush") |
| Statement of features for which protection is sought (Novelty Statement) |
| Designating Type Of Design (ie: Aesthetic OR Functional OR Both) |
| International Classification (Locarno Agreement) |
| If Paris Convention priority is claimed: no., date & country of priority application |
| If Paris Convention priority is claimed: certified copy of priority application ** |
| Verified English translation of priority application (where relevant) ** |
| Representations (drawings or photographs) – see note below ** |
| Form D3 - Declaration & Power Of Attorney ** |
| If the article has been disclosed before filing - detail of the Release Date |
** indicates that this may be filed late
Legalisation / Notarisation
No legalisation or notarisation of any forms is required.
Representations
It is possible to file representations either as (i) drawings (preferred) or (ii) photographs. The drawings / photographs must be sufficient to illustrate the design clearly. Typically: front view, rear view, profile views, plan views, isometric views.
Minimum Filing Requirements For Urgent Applications
In urgent cases, at the very minimum, we will need the following:
-
★ name & physical address of applicant;
★ description of article to which design is applied;
★ if Convention priority is claimed: no., date & country of priority application.
Note: representations of the design and a definitive statement of novelty will need to be filed within 14 days of filing the urgent application.
Whatever it is that our clients and associates require: from trade mark applications in the Ukraine, to renewals in Guinea Bissau, to assignments in China: at Margo® Attorneys, Inc., clients acquire best knowledge with above average delivery of service.