Introduction

Recently one of the leading producers of soy sauce, the Kikkoman Corporation, was finally able to register its soy sauce dispenser bottle registered as a 3D trademark in Japan. Although the Kikkoman Corporation's soy sauce dispenser was introduced in the market in 1961, it had never been protected as a trademark in its home country.

What does this mean for South African proprietors who wish to file a shape or container mark?

The most important question for a proprietor is what the intention is for their shape mark. If the purpose is use of the shape for a short period, then it is sufficient to file it according to the Designs Act (195/1993). However, if the intention is use over a prolonged period, then the best way is to layer registrations so as to have proper protection.

Copyright Act

The Copyright Act (98/1978) is mentioned in passing as copyright automatically subsists in artistic works (ie, shape marks qualify as artistic works). While ensuring that the proprietor is the copyright owner, the main issue with the act is reverse engineering.

The act makes it clear that once 3D reproductions of a protected artistic work have been made available to the public, there is no infringement of the artistic work in the event that a third party, without the proprietor's consent, makes or makes available to the public 3D reproductions or adaptations of the protected artistic work if the protected reproductions primarily have a utilitarian purpose and are made by an industrial process. Unfortunately, therefore, copyright can generally not assist a proprietor in this regard.

Designs Act

The Designs Act allows for the registration of shapes as either aesthetic or functional designs. The pros of registering a shape mark under the act is that it is a faster registration process taking about six months and is relatively inexpensive. The cons associated with this route is that there is no substantive examination of the designs. This might leave a proprietor in an unenviable position later on when it is discovered that their shape mark or design is infringing a prior registered design and/or that their design registration is invalid because their design was not new or original. Further, the rights granted are not in perpetuity as protection is only given for a maximum term of 15 years for an aesthetic design and 10 years for a functional design.

Trademarks Act

As the Trademarks Act (194/1993) allows for the registration of shapes or containers; this is how a proprietor can obtain long-term protection for an aesthetic 3D mark. Although the registration of a trademark may take a while, it is not expensive and it offers protection in perpetuity as a registration can be renewed every 10 years.

The act only allows for the protection of aesthetic shape or container marks and not of functional designs as Section 10(5) of the act prevents the registration of a shape mark where any features of it are necessitated solely by the function which the shape is intended to perform, or the registration of a container or a shape where the registration of such is or has become likely to limit the development of any art or industry as per Section 10(11). In addition, a shape or container registration is generally filed and protected in respect of the contents sold in the container.

Comment

Proprietors that are interested in registering a shape or container mark should be aware of the kind of protection that a specific IP act affords them and ensure that they layer their rights in order to have the best protection as well as protection in perpetuity. The solution to finding the best protection is to speak to a qualified IP attorney as a first step.

For further information please contact Luyanda Ntuli at KISCH IP by telephone (+27 11 324 3000) or email (luyandan@kisch-ip.com)?. The KISCH IP website can be accessed at www.kisch-ip.com.

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