Whereas a patent confers generally wide protection for an invention, the
protection afforded by a registered design is limited to the specific
appearance of the article so registered. This protection does not extend
to the underlying principle or the functional purpose of the article.
Design registration is particularly suitable for articles which are not
new in their underlying concept, but which have been re-designed to give
them a more striking or pleasing appearance or to make them more fit for
the function they perform. Many products of industrial and other
designers which, by their nature, may be unsuitable for patent
protection can be effectively protected by design registration.
Whereas a patent is primarily intended to cover the conceptual features of an
invention underlying potentially a range of embodiments, a design registration
covers the form and outer appearance of an article. In certain cases, it is
advisable to have parallel design and patent protection for an article. Barring
these differences between patents and designs, many similarities do exist
concerning the application and rights afforded to the proprietor in both cases.
Validity requirements in general
As design laws are not universal, some discrepancies exist between the
validity requirements for designs in the different countries.
In general, to qualify for valid design protection, a design must be new
and original and generally of an utilitarian nature, keeping in mind
that valid designs are dependant on their visual appearances as judged
solely by the eye.
A design is considered new if it does not significantly differ from
known designs or combinations of known design features, i.e. the design
differs from the state of the art. The state of the art comprises all
matter available to the public, including prior design applications
which have an earlier priority date. Thus, even if a design is new in a
country in which protection is sought but is known elsewhere in the
world, it will not be possible to obtain protection in that country. In
view of the above requirement for a design to be new, it follows that a
design must be kept absolutely secret until it has been included in a
design application, otherwise the design will not be capable of being
In connection with the above, we have to rely on your
information. However, the establishment of the existence of earlier
design registrations and other aspects should be investigated.
At least initially, we do not normally recommend that a search be
conducted to determine whether or not a design is new or original. The
reason is that the costs of a search may outweigh the cost of
filing a design application in a single country, especially one as
relatively inexpensive to file in such as South Africa.
Furthermore, certain countries (such as South Africa) do not conduct an
examination on the subject matter of a design application and will
register a design as long as all the necessary paperwork has been
submitted (however, the validity of such design can be attacked at any
time by others).
However, if design protection in several foreign countries is
contemplated, it may be prudent to instruct us to conduct an
international design search prior to carrying out a programme of design
applications. This precaution is also
recommended before investing in somebody else's design, before
embarking upon expensive litigation against an alleged infringer, or before commercializing a design that may not be new or original.
Safeguards against infringement of designs held by others
Similar to a patent, a design is a territorial right limited to the
country in which the design has been registered. In general, the
registration of a design gives the proprietor thereof the right (in the
country concerned) to prevent third parties from making, selling or
importing the articles bearing or embodying a design which is a copy, or
substantially a copy, of the protected design when such acts are
undertaken for commercial purposes.
The term of a design in most countries is 10 years, subject to the
payment of annual renewal fees, but this term may vary from country to
Procedure for obtaining design protection for your invention
The first step (for our South African clients) to obtaining design
protection in several countries is normally the filing of a design
application at the South African Designs Office.