The Interplay Between Trade Mark and Design Protection

1995 has seen the promulgation of two new Intellectual Property Statutes. On 1 May of this year, the Designs Act No. 195 of 1993 and the Trade Marks Act No. 194 of 1993 came into force repealing the Designs Act 57 of 1967 and the Trade Marks Act 62 of 1963 respectively. Both these Acts have brought about important and radical changes and in both instances have increased the scope of protection provided by their predecessors. For example, the 1993 Trade Marks Act now allows for the shapes of products to be protected as trade marks, and this has resulted in some overlap between trade mark and design protection.

Design Registration

Designs may be registered either as aesthetic or functional designs, or both. Aesthetic designs refer to designs which are applied to an article, whether for the pattern, shape, configuration or ornamentation thereof (or for any two or more of the aforementioned purposes) which have features which appeal to and are judged solely by the eye. Although the aesthetic quality thereof is immaterial, the purpose of the aesthetic design must be to fulfil an aesthetic (as opposed to functional) role. Let us take, for instance, a cold drink bottle with a unique shaped stopper, which stopper has both aesthetic and functional features. Insofar as certain of the features of the stopper, appeal to and are judged solely by the eye i.e. they are decorative; such features may be registerable as an aesthetic design.

The Designs Act does however state that any features of an article insofar as they are necessitated solely by the function which the article is intended to perform, or any method or principle of construction, shall not afford the registered proprietor of an aesthetic design any rights in such features, method or principle of construction. Therefore, it will not be possible in the case of the bottle and stopper example to protect the features of the stopper by means of an aesthetic design registration in so far as such features are necessitated solely by the function which they are intended to perform. Should the shape of an article have partly an aesthetic purpose and partly a functional purpose (i.e. the shape which is sought to be protected is not the only shape available to fulfil that particular purpose) it should be possible to obtain an aesthetic design registration to protect the aesthetic (and only the aesthetic) features embodied therein.

Functional designs, on the other hand, cover any designs which are applied to articles for the pattern, shape or configuration thereof (or for any two or more of these purposes) which features are necessitated by the function which the article to which the design is applied is to perform. In the example of the bottle and stopper, it could be possible to obtain a functional design registration for the features of the stopper which are necessitated by their function; ie such features which enable the stopper to perform its particular function.

Registrations of both aesthetic and functional designs do, however, have strict novelty requirements. An aesthetic design may only be registered where such an aesthetic design is both "new" and "original". In order to be registered as a functional design, a design must be "new" and "not commonplace in the art in question". A design will be "new" if it is different from or does not form part of the "state of the art" immediately before the date of the application for the registration of the design. The "state of the art" comprises all matter which is made available to the public (in South Africa or elsewhere) by written description, by use or in other way, and all matter contained in an application for the registration of a design in the Republic of South Africa or in a foreign country. Insofar as products have thus already been made available to the public, subject to what is said below, regarding the so-called "release date", it will not be possible to protect such products by way of aesthetic or functional design registrations in view of the fact that the novelty requirement has been destroyed in view of them having been made available to the public.

Although it is nowhere indicated in the Act what is meant by "not commonplace in the art in question", it has been debated within Intellectual Property circles that this may mean that it should not embody anything which is considered to be an everyday and obvious variant of a known design. The courts will, it is hoped, shed some light on the meaning of this phrase in due course.

As noted from the above, it is thus important to file a design application before the novelty requirement is destroyed. In this regard the Designs Act allows for the application of a design, both aesthetic and functional, if such application is made within six months of the "release date". "Release date" is defined to mean the date on which the design was first made available to the public (whether in the Republic or elsewhere) with the consent of the proprietor or any predecessor in title. This is a new provision in the Designs Act and is to be welcomed as it allows the proprietor of a design to test the market, albeit briefly, prior to incurring the expense of filing the design application.

Aesthetic designs are, subject to payment of renewal fees, valid for a period of fifteen years and functional designs for a period of ten years.

Trade Mark Registrations

Under the previous Trade Marks Act, an attempt was made to register the shape of the WEBER kettle grill as a trade mark. The Supreme Court, however, refused the application and stated that a trade mark cannot be the goods themselves but must be something different from the goods - something which is used in juxtaposition to the goods. However, the definition of a mark in the 1993 Trade Marks Act has, in line with other trade mark statutes in the world, been extended and now includes, inter alia, "shape, configuration, pattern and ornamentation". In view of the fact that the wording upon which the court relied in the WEBER case has been retained, there has been some debate about whether it will be possible to register the shapes of goods as trade marks under the 1993 Trade Marks Act. It is, however, my view, and I believe the general feeling, that the 1993 Trade Marks Act clearly contemplates the registration of shapes of goods as trade marks.

The departure point for a mark to be registerable as a trade mark is that it should be capable of distinguishing the goods and/or services of one person from the goods and/or services of another. In order to be "capable of distinguishing" a mark should be either inherently capable of distinguishing or have become capable of distinguishing as a result of prior use of the trade mark.

Therefore, insofar as the shape of the stopper, in our example above, is capable of distinguishing such goods from the goods of another, such shape may be registerable as a trade mark.

The important provisos in respect of the registration of shapes in terms of the 1993 Trade Marks Act are found in Sections 10(5) and 10(11). Section 10(5) states that a mark shall not be registered as a trade mark where it consists exclusively of the shape, configuration or colour of the goods where such shape, configuration or colour is necessary to obtain a specific technical result or results from the nature of the goods themselves. Furthermore, Section 10(11) provides that a mark shall not be registered as a trade mark where it consists of a container for goods, or the shape, configuration, colour or pattern of goods, where the registration of such mark is, or has become, likely to limit the development of any art or industry.

As long as the shape of the stopper, therefore, is not necessary to obtain a specific technical result (in other words the specific shape of the stopper is not the only shape required to obtain the technical result of closing the bottle), is not determined by the nature of the goods themselves or is not likely to limit the development of any art or industry, the shape may be registerable as a trade mark in terms of the 1993 Trade Marks Act, provided of course it is capable of distinguishing those products from the products of another. A good example of the shape of a product which may, arguably, be protected as a trade mark is the unique and distinctive triangular shape of the TOBLERONE chocolate bars.

Also of interest is Section 34(2) (e) of the 1993 Trade Marks Act which states that a trade mark shall not be infringed by the bona fide use by any person of any utilitarian features embodied in a container, shape, configuration, colour or pattern which is registered as a trade mark. As trade marks may be registered indefinitely, provided renewal fees are paid, such a provision is necessary to prevent a proprietor from obtaining a perpetual Intellectual Property right in something which may, arguably, be better protected by, for example, a patent.

The strict novelty requirements in the Designs Act are not present in the Trade Marks Act and the shapes of products may be registerable as trade marks, notwithstanding such prior use of the products. Indeed, such prior use may assist in convincing the Registrar of Trade Marks, or the courts if necessary, that the shapes of the goods are in fact capable of distinguishing.

From the above it is clear that a significant overlap has been created by the new Designs and Trade Marks Act. There are numerous examples in which it may be possible for a product to be protected by way of both the Designs and Trade Marks Act. For example, the tread in a motor vehicle tyre, the peculiar shape of a tennis racket, distinctive shapes of furniture, to name but a few. In view of the strict novelty requirements stipulated by the Designs Act, persons launching a new product will be well advised to consult an Intellectual Property expert in order to obtain sound advice regarding the scope of the possible protection which may be obtained and/or be necessary.

Spoor & Fisher