Regulation 13 provides that an application shall state whether it is to be filed in Part A or Part F of the
register, and the class in which the design is to be registered.
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Regulation 14 provides that an application shall state the article or articles to which the design is to be
applied, and where the Registrar so requires, the applicant shall state also for what purpose the article(s) to
which the design is to be applied will be used.
Regulation 18 provides that there shall be furnished in connection with an application for the registration of
a design to be applied to an article, four identical representations or sets of representations (when more
than one figure is used), which may be in the form of drawings or photographs or in the form of specimens or
other records where the Registrar so directs. Regulation 19 stipulates the requirements for the drawings
and photographs. Regulation 19(3) provides that drawings shall be executed without colouring in durable,
black, sufficiently dense and dark, uniformly thick and welldefined lines and in strokes to permit of
satisfactory reproduction and that all reference symbols appearing in or on the drawings shall be simple and
clear.
[23] Regulation 15 is of particular importance with regard to the ambit and scope of the registered design. The
relevant provisions read as follows:
"15
(1)
An application shall contain, on Form D6, a definitive statement setting out the features of the
design for which protection is claimed. The definitive statement shall be used to interpret the scope
of the protection afforded by the design registration. In the definitive statement representations
may be made to reference symbols appearing in or on the representations.
(2)
In the case of an application for the registration of an aesthetic design . . . the definitive statement
may be accompanied, on Form D6, by an explanatory statement relating to the design, which
explanatory statement may refer to features of the article(s) to which the design is to be applied
including the function and/or the method or principle of construction of the article(s).
(3)
. . .
(4)
The explanatory statement may be used in interpreting the scope of the protection afforded by the
design registration."
[24] According to the definitive statement in the Form D6 the novelty of the design "lies in the shape and/or the
configuration thereof, substantially as shown in the accompanying drawing". According to the explanatory
statement the "flag or banner is shaped substantially like an inverted teardrop 10 and is adapted to be
engaged by a flexible pole 12". The accompanying drawing shows an inverted teardrop shape with a dark
bold line running from below the point of the teardrop shape, up the side of the teardrop shape and over
the inverted U to the end of the U. The line tapers from its beginning below the point of the teardrop shape
almost to a point at the end of the inverted U. When reference is had to the explanatory statement as
provided by Regulation 15(4) it becomes clear that this dark bold line is the flexible pole to which the flag is
to be engaged. It is not part of the design. The design is therefore an inverted teardrop shape which is to
be applied to a flag.
[25] In argument the defendant relied on two defences
(1)
That the plaintiff's design had been registered in the wrong class; and
(2)
That the plaintiff's design registration is invalid because the design is not new and original.
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The defendant did not persist with the first defence which was not pertinently pleaded and was mentioned
for the first time in the defendant's heads of argument. The defendant also did not contend that the
defendant's flag or banner is substantially different from the registered design. (It will be accepted, as the
parties did, that the drawing annexed to the definitive statement is a representation of the design). This
issue must be decided by the eye, bearing in mind the reaction of the likely customer see Homecraft Steel
Industries (Pty) Ltd v SM Hare & Son (Pty) Ltd and another 1984 (3) SA 681 (A) at 684I. In my view, applying
this test, the defendant's flag or banner is not substantially different from the plaintiff's registered design
and unless it is found that the design registration is invalid the defendant's product infringes the plaintiff's
design. The only issue to be decided therefore is whether the plaintiff's design is invalid because it was not
registrable in terms of section 14.
[26] The defendant contends that the registered design does not meet the requirements of novelty and
originality. The defendant contends that if regard is had to the state of the art immediately before the date
of application for registration the design was not new. The defendant refers to the various teardrop shaped
objects depicted in the prior art: the flag or banner in the Rehbein patent specification; the Norman shields;
the kites and fan blades. The defendant contends that this commonlyused shape formed part of the state of
the art before the relevant date. The parties did not debate what the state of the art is in relation to the
plaintiff's design registration and it will be accepted as their expert summaries contended that it is either
flags or banners or flags and banners and accessories. The defendant did not explain why the design is not
original. There is no evidence that the first proprietors did not create the design Burrell's South African
Patent and Design Law 3ed paragraph 9.73. The question of originality requires no further consideration.
[27] The plaintiff's answer to the argument on novelty is simple. The plaintiff's design registration is not simply for
a teardrop shape. It includes the pole. In this regard the plaintiff relies on the definitive and explanatory
statements which the plaintiff contends must be read together with the drawing. As already pointed out the