In terms of section 35(1) of the Designs Act the registered proprietor of a design may institute proceedings
for infringement and in terms of section 35(3) the registered proprietor may claim an interdict, surrender of
any infringing product or any article or product of which the infringing product forms an inseparable part and
damages, or, in lieu of damages, a reasonable royalty. In such proceedings the plaintiff bears the onus of
proving infringement of the design see Burrell's South African Patent and Design Law 3ed paragraph 9.95.3.
In terms of section 35(5) of the Designs Act in any proceedings for infringement the defendant may counter
claim for the revocation of the registration and, by way of defence, rely upon any ground on which the
registration may be revoked. In such revocation proceedings the defendant bears the onus of proving that
the design is invalid see Swisstool Manufacturing Co v Omega Africa Plastics 1975 (4) SA 379 (W) at 382CD.
In terms of section 31(1)(c) of the Act any person may apply for the revocation of the registration of a
design, on the ground that the design in question is not registrable under section 14.
[17] In the present case it is not in dispute that the plaintiff is the registered proprietor of design A97/1155 and
that the defendant has made, used and disposed of articles which fall within the class in respect of which
the design is registered. The only issue is whether the articles made, used and disposed of by the defendant
embody the registered design or a design not substantially different from the registered design. It will be
recalled that this requires a comparison between the allegedly infringing articles and the registered design.
It will be convenient to consider at this stage what the ambit or scope of the registered design is as this is
relevant both to the question of infringement and the defence of invalidity.
[18] There is no South African authority dealing pertinently with the scope of a design registration but clearly this
must be determined with reference to the contents of the register.
[19] The position under English law offers some assistance. In paragraph 31.6 of Laddie, Prescott and Vitoria The
Modern Law of Copyright and Designs 2ed, the learned authors deal with the scope or ambit of a registration:
"The ambit of a design is determined primarily by considering the representation filed at the Designs Registry
and the statement of novelty, if there is one, filed with it. As the Court of Appeal explain in Sommer Allibert (UK)
Ltd v Flair Plastics Ltd:
"The purpose of the statement [of novelty] is to direct attention to the part or parts of the submitted design
which are said to introduce into it the applicants' alleged novel contribution and thus to entitle them to
registration. It is important because it defines the scope of the monopoly claim. While the court does not
have to assume that it is correct, it precludes the proprietor, who has obtained his registration on the
grounds that certain features of the design give novelty to it, from thereafter denying their novelty and
asserting their immateriality, so as to extend the scope of the protected design."
If, for example, the representation filed at the Registry depicts a cup with a pattern upon it and the statement of
novelty is directed to the shape of the cup, or the shape of the handle, and not the pattern, then it is only the
originality of the shape which is relevant to validity. If the statement of novelty
Page 215 of [2006] 3 All SA 206 (T)
picks out certain features as being of particular significance then it is the novelty of those features which must be
considered. If, on the other hand, the statement of novelty is expressed widely and not directed to particular
features then it is the novelty of the design as a whole which must be considered. There is also a limited class of
cases in which it is not mandatory to file a statement of novelty. Where a statement is not filed, once again it is
the novelty of the design as a whole which has to be considered."
[20] Section 7(1) of the Designs Act provides that there shall be kept at the designs office a register in which
shall be entered
(a)
the names and addresses of applicants for the registration of designs and of persons to whom
registration has been granted and the classification of such designs according to subjectmatter; and
(b)
such other particulars as may be prescribed.
Section 7(2) of the Act provides that copies of all deeds, agreements, business and other documents,
affecting a registered design or application for a registration of a design which are required to be recorded in
the register, shall be supplied to the Registrar in the prescribed manner for filing in the designs office.
Regulation 8 provides for the mailers to be entered in the register. Regulation 8(4) provides that the
Registrar shall maintain a record containing a representation or representations or a specimen or specimens
of the design which has been registered in such form as the Registrar may deem necessary.
[21] Section 14 of the Designs Act provides that the proprietor of an aesthetic design which is new and original
may, in the prescribed manner and on payment of the prescribed fee, apply for the registration of such
design. In terms of section 14(2) a design is deemed to be new inter alia if it is different from or if it does not
form part of the state of the art immediately before the date of application for registration thereof. In terms
of section 14(3) the state of the art comprises all matter which has been made available to the public
(whether in the Republic or elsewhere) by written description, by use or in any other way. In terms of
section 14(5) no feature of an article insofar as it is necessitated solely by the function which the article is
intended to perform shall afford the registered proprietor of an aesthetic design any rights in terms of the
Act in respect of such feature, method or principle. Section 15(1) of the Act provides that the Registrar shall
examine in the prescribed manner any application for the registration of a design and, if it complies with the
requirements of the Act, register the design in the relevant part of the register.
[22] Regulation 12 governs applications for registration of designs. Regulation 12(1) provides that an application
for the registration of a design shall be made on Form Dl and shall be accompanied by a number of
prescribed documents, including a representation or representations of the design in the prescribed form
and the prescribed definitive statement on Form D6, in duplicate.