Introduction

Registered trademarks have often been considered the only way to protect logos (eg, icons, logos, graphic symbols, surface patterns and ornamentations). However, since the inclusion of Class 32 in Schedule 3 of the Design Regulations, logos are increasingly being protected as both trademarks and registered designs.

The South African design registration system provides for the registration of two types of design:

  • aesthetic designs based on the product's features of pattern, shape, configuration or ornamentation, which appeal to and are judged solely by the eye; and
  • functional designs based on the product's features of pattern, shape or configuration, which are necessitated by the function of the product.

Aesthetic designs, designated with the letter 'A', have a term of 15 years. Functional designs, designated with the letter 'F', have a term of 10 years.

South African designs are classified in accordance with the Locarno classification system (albeit a simplified version thereof). In December 2010 a revised Schedule 3 of the Design Regulations was published in the Patent Journal. The schedule sets out an amended system for design classifications, specifically referencing Class 32, which was a new class added to cover "graphic symbols and logos, surface patterns and ornamentation", and Class 14-04 for screen displays and icons.

In light of the above, there is a clear overlap between trademarks and registered designs, specifically in respect of logos and icons, which can be filed as both.

Trademarks and registered designs

Unlike trademarks, in order to register a design application, the product must be new or have been made available to the public only during the six months preceding the application (ie, the release date). When filing a design application, priority from a foreign application can be claimed, provided that the South African application is filed within six months from the priority date. Further, it is not possible to file a single design application covering multiple products (as is the case for EU applications) and a separate application must be filed for each product.

Shapes of products and their packaging, as well as other three-dimensional (3D) signs can be protected through trademark and design laws. The protection afforded by each is different, but not contradicting. The principles of trademark and design laws may overlap as applied to the same 3D object. However, such principles are not mutually exclusive and rights can accumulate and be complementary.

The Designs Act determines the novelty factor in the shape or configuration of a product, or pattern or ornamentation applied to a product; whereas the purpose of protection under the Trademarks Act is to identify a particular trade origin in connection with specific goods or services. The shape of a product or container can serve as a source indicator under the Trademarks Act and can also be a novel design fulfilling the criteria of registrability under the Designs Act. Thus, dual protection from both design and trademark laws may coexist.

Advantages of design rights

Registering a logo as a design right can have many advantages. First, registered design applications are not substantively examined and thus are granted quicker than their trademark counterparts. As a result, a new logo can obtain immediate protection while it acquires the distinctiveness necessary for trademark registration.

A design application is granted upon its publication. There is no opposition period and therefore are no prosecution costs.

Generally, fewer design applications than trademark applications must be filed in order to obtain protection, as there are fewer classes and applications are not classified in accordance with sub-classes – only main classes are used, covering a broader range than trademark classes. Further, designs are not limited by colour and are generally filed in greyscale or black and white.

Once the design right is granted, there is no obligation to use the protected product. Unlike trademarks, design rights cannot be revoked on the basis of non-use.

Comment

Design rights both complement and improve upon the protection provided by trademarks, and a well thought-through filing strategy should consider both types of right in order to achieve the best possible protection for a brand.

For further information please contact Annelise Engelbreg? at KISCH IP by telephone (+27 113 243 000) or email (annelisee@kisch-ip.com). The KISCH IP website can be accessed at www.kisch-ip.com.

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