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20 March 2015
An earlier report by the writer in respect of a Supreme Court of Appeal decision (BMW AG v Grandmark International (Pty) Ltd 2014 (1) SA 323 SCA) adopted a cautious view on the effect of that judgment on the OEM industry seeking to compete in the South African market. Happily, a further decision (August 2014) on similar subject matter (Chespak (Pty) Ltd v MCG Industries (Pty) Ltd 2014 JDR 1734 (GP)) is now to hand which brings much needed certainty on the question of functionality as this may apply to registered South African designs.
The case concerned an appeal from an a quo decision that granted an interdict against infringement of a registered aesthetic design by a local manufacturer. Two main issues drove the appeal, namely that if any feature of the aesthetic design registration performs any function, that feature is functional in nature and has to be excluded in determining aesthetic design right merit. This applies the moreso, so the argument went, if the design rights holder opted to use a so-called omnibus type definitive statement in defining its monopoly. This type of claim typically reads:
“the features of the design for which protection is claimed reside in the shape and/or configuration and/or ornamentation and/or pattern as applied to article X, substantially as shown in the accompanying illustrations”
The appellant’s contention was that the use of an omnibus type definitive statement identified no specific feature to enable the general public to identify what the scope of protection is, thereby making the right itself a nullity. Further, the appellant contended that the absence of certainty in relation to the claimed monopoly meant that it had to consider every feature resident in the design, which in its view afforded it a basis on which to pry open its argument on functionality of each individual feature.
A three bench sitting of judges of appeal disagreed. In disposing of the appellant’s criticism of the use of omnibus type definitive statements, reference was made to the dictum of Laddie J (as he then was) in Ocular Sciences Ltd v Aspect Vision Care Ltd  RPC 289 at 422, which was applied with approval by a sitting of the Full Bench in the Supreme Court of Appeal in Clipsal and Another v Trust Electrical 2009 (3) SA 292 at 7, which accepted the omnibus type statement in local practise. Laddie J’s reasoning which was accepted by the present judges included that the omnibus type statement does not isolate any aspect of the design with the object of claiming novelty or originality in any particular feature and that the proprietor can choose to assert the design right in respect of the whole of the design or part thereof. This is as broad as one can permissibly construct the monopoly under the South African Designs Act 193 of 1995.
The Court then turned to deal with the functionality argument. Accepting that any court in determining the scope of a design right, must not consider solely functional features of a design in the context of an aesthetic design registration, the Court put paid to the argument by casting a light over the use of the word “solely” by the Legislature. The Court reasoned that the scope of functionality exclusion within the aesthetic context does not extend to features serving a functional purpose but also having aesthetic appeal. The mere fact that a feature of a design or the design itself performs some function is not decisive. The real test is whether the function which the design or the article to which the design is applied performs, dictates or necessitates its shape or configuration. In other words, the Court in deciding the question must have regard to whether the feature is included as part of the article (or the design) solely or purely for the reason that it performs a function, or if that article or feature has added aesthetic appeal. The fact that the mentioned feature could have been manufactured to look differently added to the Court’s reasoning in finding against the functionality argument.
On the question of infringement, the Court re-stated earlier authority (Brudd Lines v Badsey (2) 1973 (3) SA 975 (T)) that the criterion is one of an impact made on the eye by the whole of the design. A minute analysis for such differences as there may be between the design and the infringing product (in the context of omnibus statements) is inappropriate. No doubt there would be differences in the infringing product as any infringer would attempt to camouflage plagiarism by introducing a difference here or there. If the design, when viewed as whole, shows unmistakeable similarity beyond argument, infringement would be established.
The present decision should bring comfort to the workshops of OEM designers in that it has provided certainty, albeit where such certainty already existed under the cited authorities, in a convenient manner that strings together relevant considerations of the functionality v aesthetic designs argument in a single case. One would indeed be hard pressed to find an aesthetic design that is not completely free of the performance of any function, whether such function is to provide support, embellish or merely look pretty. It is a good decision and in line with our comments made in the BMW case supra.