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Designs: Registration

What are the requirements for a design registration?
To be registrable as designs, articles must meet certain requirements. It is also possible that other forms of intellectual property may vest in the same article, and that additional protection could be considered and sought for the same article under the Patents Act, Copyright Act and Trade Marks Act.

As can be derived from the table below, considering the nature of design registrations, registered design rights can often be considered as something in between copyright and patents:

  Copyright Aesthetic Designs Functional Designs Patents
Degree of unique-ness required Originality (spent own skill and/or labour) (1) Novelty and(2) Originality (1) Novelty (new in the world) and(2) Not commonplace in the art in question (1) Novelty (new in the world) and(2) inventiveness
Nature of the creation The work must be an artistic/ literary/
musical/ work, published edition, sound recording, computer program or cinematograph film as defined in the Copyright Act
(1) Destined to be multiplied by an industrial process and Destined to be multiplied by an industrial process Capable of being used or applied in trade or industry
Registration Copyright subsists automatically if the requirements are met. In South Africa copyright can only be registered for cinematograph films. (2) Must have new and original visually appealing features.
Must be registered.
have new and original features which are necessitated by the function which the article, to which the design is applied is to perform. Must be registered. Must be applied for and granted.
Period of protection 50 years (the date from which the period is calculated depends on the facts of each instance) 15 years 10 years 20 years

Although an article must be original to be registrable as a design, like copyright works, and new like inventions for patent registrations, the standard of inventiveness is not required as in the case of patents.

A further requirement is that the article for which a design registration is sought should be destined for multiplication by an industrial process. For example, if the ornamental spoon described above is intended to be reproduced in a factory. However, if such spoon is created as an individual work of art not meant for reproduction, it would not meet this particular requirement for registration and may only fall within the ambit of a work in which copyright might subsist.

Although copyright generally vests in original “artistic works” (like the ornamental spoon), it is very important to bear in mind that, once an artistic work is reproduced in an industrial process, it is likely that such work will not be sufficiently protected by copyright due to the possibility of reversed engineering.

Therefore, in the case of new and original works or articles which are destined to be reproduced, it is essential to obtain design registration(s) before the novelty of the design is destroyed by disclosure. In this regard, it should further be noted that, depending on the specific product or article in question, it is often possible and frequently also advisable to consider registering a design, as well as a patent for the same product.

The same article or object could also qualify for registration of a design and registration of a trade mark. Trade marks can be registered for any mark which is represented visually and capable of distinguishing the goods or services of one trader from the goods and services of another trader in the same sector. For example, an object with a distinctive shape, such as a uniquely shaped bottle, which also meets the other requirements discussed above, could in principle be registrable as a design and shape trade mark.

The advantage of this approach is, whereas design protection lasts for a maximum of 15 years, trade mark rights can be valid indefinitely, subject to the renewal of the trade mark registration every 10 years from filing. Therefore, even if a patent and/or design has expired, or became void for whatever reason, the inventor/designer can still enjoy trade mark rights. It is thus important to, when registering a design and/or patent or as soon as possible thereafter, consider trade mark registrations as well.

What is the design registration procedure?
After the classification of the design has been considered and the specification has been prepared, the design application is filed and examined (on formalities only) by the Designs Office. After the design application is accepted, advertised in the Patent Journal and no objections are raised, it should proceed to registration and a Registration Certificate will be issued. This process typically takes in the region of 12-16 months. Design registrations have to be renewed annually, as from the third year of filing.

Need further advice or information?
Please note that the above comments are general information and not formal advice. Please do not hesitate to contact us, if you require formal advice, recommendations and cost estimates for your proposed design registrations. 


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