South Africa: Registered Designs: A Welcome Reminder

Last Updated: 11 July 2017
Article by Rowan Forster

A recent decision involving registered designs is a reminder of how useful design law can be, in the sense that it can be used to protect an almost limitless range of products.

The decision in the UK case of Ahmet Erol v Sumaira Javaid (Design) (a decision of the Appointed Person, 18 May 2017) does not create any law, but it does illustrate two things. The first is how registered designs can often be very low-tech. The second is how novelty is the big issue in design law, in the sense that it's only possible to validly register a design that is, in fact, new. Although a UK case, it is relevant in South Africa too.

In this case, the two registered designs in issue were for nothing more than garments bearing a modified Union Jack on the chest (one of them also had a tick or swoosh). The registrations were attacked on the basis that they lacked novelty or individual character. It is important to note here that, although South African design law is derived from and is quite similar to UK law, UK law requires a design to be both new and to have an individual character (an expression that is defined), whereas South African legislation simply talks of novelty and originality (which we understand to be incorporated in the UK definition of individual character). In support of the claim that the registrations were invalid, Javaid had submitted so-called "prior art" in the form of photos of garments featuring Union Jacks that had appeared on Facebook before the design applications had been filed.

The Appointed Person found that, whereas the designs were new in that they differed from the prior art in more than "immaterial details", they did not have individual character, because the overall impression they produced on informed users did not differ from the overall impression produced on such users by the prior art (the garments shown on Facebook). The Appointed Person quoted these lines from the UK case of Apple v Samsung, which remind us how practical design law is, and how it really is all about appearance: "I start by reminding myself that what really matters is what the court can see with its own eyes ... the most important things are the registered design, the accused object and the prior art, and the most important thing about each of these is what they look like."

As mentioned, South African design law is similar to UK design law, but there is another difference that needs to be highlighted. In South Africa, it is possible to register both an aesthetic design and a functional design. An aesthetic design has "features [which] appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof". The protection is for 15 years. A functional design has "features [which] are necessitated by the function which the article to which the design is applied is to perform". The term of protection here is 10 years.

An important distinction between the two types of design is that a functional design cannot cover a spare part for a vehicle, machine or equipment – there is no such exclusion regarding an aesthetic design. This distinction came up in a rare and recent South African design case, one that went all the way to the Supreme Court of Appeal ("SCA"), Bayerische Motoren Werke Aktiengesellschaft (BMW) v Grandmark International (Pty) Ltd and Another. What happened here was that BMW registered aesthetic designs for various BMW parts – a bonnet, grill, headlight assembly and front fender. The company then used these aesthetic design registrations to stop Grandmark from selling so-called "replacement parts"; in other words, parts that had not been made by BMW. Grandmark responded by applying to cancel the registrations on the basis that the various parts were functional in nature, and that the aesthetic design registrations were therefore invalid.

In order to establish exactly what an aesthetic design is, the SCA looked at some famous design law decisions. There was the old British case of Amp Inc v Utilux (Pty) Ltd, where the court said: "The phrases 'appeal to' and 'judged solely by the eye' denote features which will influence choice or selection." It went on to say that the features "must be calculated to attract the attention of the beholder."

There was the South African case of Swisstool Manufacturing Co v Omega Africa Plastics, where the court said: "While the eye is to be the eye of the court, the court should view the design through the spectacles of the customer." The SCA concluded as follows: "What emerges from the analysis is, essentially, that aesthetic designs are those that invite customer selection – and customer discrimination between articles – solely by their visual appeal".

The SCA went on to say that vehicle components "are not selected by customers for their appeal to the eye", but rather "for the function they perform – which is to replace components so as to restore the vehicle to its original form". It followed, therefore, that the spare parts had wrongly been registered as aesthetic designs, and that the registrations were invalid.

Design law is a much-overlooked area of IP law. Yet, it offers a host of opportunities.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions