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Can I patent my trade mark design?

by Dr Stuart Gardiner on 14 November 2018


Practitioners in the branch of law known as “Intellectual Property” or “IP” are often asked whether a certain idea can be “patented” or otherwise protected by the law. It must be stated immediately that the law does not protect ideas before the concept is turned into some physical or concrete form recognised by specific laws governing the four main defined categories of IP, namely, Patents, Designs, Trade Marks and Copyright.  It is useful, therefore, to clarify the differences between them with reference to the forms they take and the functions they perform.

Before doing so, however, it is necessary to add an element to the question clients ask, namely, whether something observed on a trip outside South Africa can be registered and monopolised in the Republic.
 
The short answer is that because it is already known to the public somewhere in the world in a concrete form it cannot be registered as a patent or design in South Africa this relates to the requirement of “novelty” which is discussed below). 
 
However, if the article concerned is not registered as a patent or design by somebody else in the Republic or is not otherwise protected by trade mark or copyright legislation or by the common law of unlawful competition, it can be adopted and used in South Africa by anybody. The reason for this is that registered IP rights are territorial in operation and they cannot be enforced in a territory in which the rights are not registered. 
 
Therefore, a patent registered in the United Kingdom can only be enforced in the UK. Similarly, a patent, design or trade mark registered in South Africa can only be enforced in South Africa. It follows that if the rights need to be protected in other territories because they are utilised there, they must also be registered in the territories concerned.

Patents

In South Africa patents are registered under the Patents Act, 1978. Inventions which are novel, useful and not obvious can be registered and protected (which means monopolised in practical terms) under the provisions of the Act.
 
To qualify as novel the invention must be totally new. This means that it must not have been disclosed to the public by any means anywhere in the world before the date on which an application for its registration in the prescribed form is filed with the Patents Registry in the Republic.
 
This requirement is often the cause of much consternation when an inventor of an otherwise patentable invention has placed it in the marketplace successfully and then wishes to exercise exclusive rights over its further exploitation through its registration as a patent, unfortunately too late because of the novelty requirement. 

The requirement of usefulness means that the invention must have utility – it must be capable of being applied on a practical level in trade, industry or agriculture.

The final requirement for an invention to be registrable is that it must reveal inventiveness. This means that it must not be obvious to persons knowledgeable in the field of its operation and must involve an inventive step derived from the imaginative skill of the inventor differentiating it from similar inventions in the field.

The Patents Act does however specifically exclude certain inventions and creations from patent registration, including mathematical methods, business methods, scientific theories, architectural designs, schemes, aesthetic creations (which are protectable as designs), rules for games and computer programs. (Whether computer programs which bring about a technical result in a physical sense such as speeding up computer responses are patentable remains an open question).

A patent registration remains in force for 20 years if it is renewed annually by the payment of renewal fees commencing from the third year after a final application (termed a complete specification) for its registration is filed.
 
A patent registration affords its owner the exclusive right to exploit the invention and any person or party who, without the authorisation or licence of the owner, makes, uses, exercises, disposes of or imports the invention infringes the registration.

Infringements can be curtailed by means of a court order in the form of an interdict and the owner is also entitled to damages if his loss can be proved.

Registered designs

In IP law a design must satisfy certain requirements to qualify for registration under the Designs Act, 1993. 
 
There are two categories of registrable designs, namely, aesthetic designs and functional designs.
 
Registrable aesthetic designs approximate to what a design is ordinarily understood to be and can comprise a decorative pattern, surface ornamentation or composition which can be applied to a fabric or other usable base, or it can be an article of a particular shape, form or arrangement of elements (configuration), whatever the use of the design and whether or not it has any artistic merit. 
 
Registration of an aesthetic design protects the look or appearance of the design as judged solely by the eye. The design is required to have features which are notable and catch the eye for whatever reason. Extraneous issues such as the fact that some persons would find the design pleasing and others ugly, are irrelevant. The test is, does it catch the eye? The choice of the word “aesthetic” which implies beauty or the appreciation of beauty is therefore misleading and an unfortunate misnomer on the part of the legislature. 
 
As is the case with patent registration, for an aesthetic design to be registrable it must new. It must also be original. New means that it must not be the same or substantially identical to any other design known to the public anywhere in the world (which is termed “the stare of the art”) as at the date application is made for its registration. If the design has already been disclosed to the public with the authority of the owner (the date of which disclosure is termed the “release date”) the newness requirement will still be satisfied if an application to register the design is made within six months of the release date.
 
The requirement that an aesthetics design must be original simply means that it must be the designer’s own work and not taken from the design or material of another.
 
It is not possible to register a one-off design for an artistic work such as a painting or statue. This is because to be registrable the article to which the design is applied must be intended for multiplication by an industrial process. This does not necessarily mean replication through an assembly line or other mechanical process, but its manufacture must involve some ongoing repetitive process in the production of the article. Thus, the Act specifically provides that the article which embodies or features the design must be an article of manufacture.
 
Designs are registered in a specific class either in Part A (aesthetic designs) or Part F (functional designs) of the Designs Register. A Part A registration endures for fifteen years and a Part B registration for ten years.
 
There are 32 available and diverse classes in which designs are registered and the class is determined by the function of the article to which the design is applied. The importance of the class is that for infringement purposes the infringing design must be classified as being in the same class in which the infringed design (whether aesthetic or functional) is registered. 
 
From the perspective of the requirement of a design being new to be registrable, however, the class of a prior design which would destroy its novelty need not be the same class as the class in which the design to be registered would be classified for it block its registration as not novel.
 
Functional designs, in contrast to aesthetic designs, do not acquire an aesthetic appeal to be registrable. To qualify for registration the shape of the functional design must be necessitated by the function which the article incorporating the design will perform. In other words, the functional design must look as it does because without the functional feature incorporated in the design, the design would not perform its intended function.
 
Whereas originality is a required condition for the registrability of an aesthetic design, the requirement for a functional design is that it must not be “commonplace in the art in question”. This means that from the perspective of a person knowledgeable in the relevant field the design is not simply ordinary or lacking in originality.
 
It is however possible for a design to be registered in both parts of the register if it has both aesthetic and functional features. In relation to spare body parts for vehicles, note must however be taken of a recent court decision which held that as the body parts concerned were of a purely functional in nature, they could did not qualify for registration as aesthetic designs and therefore had to be struck from Part A of the register.
 
A clear distinction must be drawn between the extent of the protection which is afforded to the two categories of designs by the Act against allegedly infringing designs.
 
In both the cases of aesthetic and functional designs infringements will be determined and confined to a comparison of the look of the designs. There will be an infringement if the look of the infringing design is not substantially different from the look of the registered design. This is the central premise of design protection.
 
There are, however, limitations which apply in each case. The features considered in relation to aesthetic designs are those aesthetic features which when judged by the eye, would influence a decision to purchase on the part of consumers interested in such articles when looking at the article featuring the design. 
 
The functionality of the article itself (for example whether it functions as a kettle, perfume bottle or anything else), and any solely functional elements of the article not having aesthetic appeal are disregarded when testing for an infringement. No rights in the functionality of the article or its solely functional elements are acquired under a Part A registration.
 
In the case of functional designs, aesthetic features not required for the function required for the  intended performance of the article are not taken into account when testing for infringement as the owner only obtains right to functional features under a registration in Part F of the register.
 
The designs Act also affords protection covering semi-conductor chips and integrated circuits to which special provisions apply.  The question arises whether there is any overlapping of the protection afforded to registered designs under the legislation relating to the protection of patents, trade marks and copyrights.
 
It is indeed so that a design might also embody a patentable invention. In that case and subject to the fulfilment of the requirements for its registration under the Patents Act, the embodiment can be registered as a patent. The difference lies in the fact that whereas the Designs Act will only protect the appearance of the article, the Patents Act will not protect the appearance of the article but will protect the unique conceptions of the inventor of the invention giving rise to the function of the article in trade, industry or agriculture. It is also conceivable for a design to be protected as a trade mark under the Trade Marks Act 1993, or to qualify as a protectable work under the Copyright Act, 1978.
 
Trade marks

The essential function of a trade mark is to enable consumers to identify a product and to distinguish that product from the products of competitors. Such marks are termed distinctive. It follows that in selecting a mark (in words or logo form) it must not be merely descriptive of the goods or services for which its use is intended. Such a mark will not then be distinctive and will, as a result, be unable to fulfil its essential function.
 
Only distinctive marks are registrable under the Trade Marks Act, 1993. This is not however the only requirement for the registration of a mark as a trade mark under the Act.
 
Care must also be taken not to select a mark which is the same or so similar to another trade mark as to be likely to confuse or deceive consumers into mistaking the source of the goods or services in connection with which the chosen trade mark is used as originating from an entity to which the same or similar other mark belongs. In such a case the two marks are termed confusingly similar.
  
The selection and use of a confusingly similar mark to a trade mark of another which is already registered for the same or similar goods or services to those for which the chosen mark is applied will almost certainly give rise to legal action. The legal action will take the form of a trade mark infringement action under the Act. If the prior confusingly similar mark is not registered but is sufficiently known in the trade to have a trade reputation attaching to it, the legal action will take the form of a claim for passing off, which is a category of unlawful competition in the South Africa law.
 
The adoption for use in the Republic of a trade mark from another territory which is not registered in South Africa is not necessarily unlawful but a risk attaches to this practice. The general rule, which also applies to patents and designs, is that the statutory protection of registered IP rights is confined to the territory in which the rights are registered.
 
In the case of trade marks, however, if the foreign owner can show that the trade mark has a reputation amongst a substantial number of persons interested in the trade in which the adopted mark is used in South Africa, it will qualify as a well-known mark in the Republic protected by the Act and legal action could follow.
 
Although unlike patents and designs, originality is not a requirement for trade mark registration the most prudent approach is to be original in the selection or creation of a trade mark. It is most advisable to have a search of the Trade Marks Register conducted prior to committing to a trade mark to ensure that there are no prior entries on the register which will block registration of the chosen mark or which will be infringed should the chosen mark be registered.
The monopoly afforded by a trade mark registration is not absolute but is limited to preventing the unauthorised use of an identical or confusingly similar mark in relation to the same or similar goods or services for which the trade mark is registered.
 
The goods or services for which a trade mark is registered is determined by class and the class (of which there are 45 available) is determined by the nature of the goods or services for which protection is required. Where the mark is to be protected for a wide range of goods or services, its registration in all relevant classes is required.
 
It is important to note however that, otherwise than is the case with registered designs, for the purposes of infringement the concept of “similar goods or services” does not necessarily mean goods or services in the same class or classes in which the allegedly infringed mark is registered. Thus, for example, a trade mark registered in class 3 for perfume has been held by the court to be infringed by use of an identical mark for women’s clothing. In such cases it is the likelihood of consumer confusion or deception and not the classes in which the relevant goods resort which will be the determining factor.
 
The monopoly afforded by a registered trade mark also extends to an issue unrelated to the registered goods or services. The use of an identical or similar mark in relation to dissimilar goods or services to those registered in a manner which dilutes the commercial value or distinctiveness of the registered mark will infringe the registration, provided it can be shown that the registered mark is well known in South Africa and the conduct complained of is likely to cause financial loss.
 
Ultimately, the value of a trade mark is determined by the goodwill in the business which is created around the mark which the trade mark encapsulates.
A trade mark registration endures for an initial term of ten years and unlike registered patent and design rights which require periodic renewals during their term to maintain their term and which expire at the end of the term, registered trade marks do not require their term to be maintained and can be renewed for further ten-year terms ad infinitum upon payment of a renewal fee.
 
A trade mark by its very nature cannot also embody patent rights but could, if it is in a graphic logo form, qualify for protection as an aesthetic design under the Designs Act,1993 and as an artistic work under the provisions of the Copyright Act, 1978, subject of course to compliance with the requirements for protection to be obtained under the provision of each Act.
 
Copyright

Two things must be borne in mind when considering copyright.
Firstly, there is no copyright in ideas. As is the case with all IP rights, to be protectable, the underlying idea must be connected to some physical form recognised as being protectable in terms of the applicable legislation. Secondly, and otherwise than is the case with patents, designs and trade marks, copyright protection arises automatically once a protectable work has been made without any registration procedures being required.
 
Furthermore, copyright protection is virtually worldwide as a result of South Africa being a member of an International Convention (termed the Berne Convention) in terms of which the works of qualified persons owning copyright in works under the copyright laws of member states must be afforded the same protection for the work in all member states as the work of a qualified person in a member state enjoys.
 
Under the Copyright Act, 1978, the author or maker of the work must either be a citizen of South Africa or be domiciled or resident in the Republic to be a qualified person entitled to copyright protection of the work in terms of the Act. In the case of an incorporated entity the entity must be incorporated in the Republic to qualify.
 
Interestingly, where there are joint authors or makers of the work only one of the joint owners needs to be a qualified person for the work to obtain copyright.
 
Although there are no administrative requirements to be complied with for copyright to be obtained under the Act it does specifically require the work to be original. This means that the work itself must not be a copy of the work of another. This does not however mean that the idea underlying the work must be the author or maker’s original idea as copyright protects the work itself and not underlying ideas. It is not however lawful for the work to be a mere adaptation of the work of another constituting the same or substantially the same work of another merely recast in another form. 
 
It must also be noted that originality implies that the author or maker has expended individual time and effort in creating the work in the absence of which the creation will not attract copyright protection. As is the case with registered designs, however, it is not necessary for the work to have any literary or artistic merit as a requirement for it to obtain copyright protection.
 
The Copyright Act recognises a defined range of works which can enjoy copyright protection under its provisions namely –
  • Literary works, which includes works such as novels, stories, poetic works, film, television and broadcasting scripts, plays, essays, articles, dictionaries, textbooks, reports, memoranda, lectures, sermons, tables, compilations and the like;
  • Musical works;
  • Sound recordings;
  • Artistic works such as paintings, drawings, sculptures, photographs, engravings, craft works and works of architecture;
  • Cinematographic films (moving pictures) which includes movie soundtracks and stills taken from movies;
  • Computer programs of which the object and source codes are protected;
  • Radio and television broadcasts;
  • Programme carrying signals;
  • Published editions.
Specific provisions of the Act determine who owns the copyright in the range of protected works. The basic rule is that the author or maker of the work is the copyright owner. The basic rule is however subject to the following exceptions –
  • The copyright in photographs, paintings, portraiture drawings, cine films and sound recordings is owned by the person who commissions the work (if that is the case) and who pays or undertakes to pay for it;
  • Copyright in a work made by an employee or apprentice working under a contract of employment or apprenticeship with an employer or principal is owned by the employee or principal, as the case may be;
  • Copyright in a computer program is owned by the person under whose control the program is created, who is also deemed to be the author of the program;
  • The State or International Organisation, as is the case, owns all the copyright in works made under its direction or control.
  • The various terms for which copyright endures in the categories of protectable works under the Act are as follows –
  • Copyright in literary, musical and artistic works endures for fifty years from the end of the year of death of the composer or maker of the work concerned; If however any such work or an adaptation of it has not been published, performed in public, offered for sale or broadcast before the death of the author, the fifty-year term runs from the end of the year during which any  such act takes place; 
  • Copyright in sound recordings and radio and television broadcasts endure for fifty years from the end of the year during which the work was published or broadcast for the first time;
  • Copyright in cine films, photographs and computer programs endure for fifty years from the end of the year in which copies of the work were lawfully made available to the public or were first published (whichever term is longer) or, in the absence thereof, for fifty years from the end of the year in which the work was made;
  • Copyright in programme carrying signals endures for fifty years from the end of the year in which the signals were first emitted to a satellite;
  • Copyright in published editions endures for fifty years from the end of the year of first publication of the edition.

The owner of copyright has the exclusive right to reproduce or adapt the work to a different form or otherwise to deal with and fully exploit the work, whether for commercial gain or otherwise.
 
The honour and reputation of the author or maker of a copyrighted work (termed “moral rights”) are protected by the Act insofar as any distortion, modification or mutilation of the work which is prejudicial to the author or maker’s moral rights constitutes copyright infringement.
 
The copyright owner can take legal action in terms of the Act against third parties who make unauthorised copies, reproductions or adaptations of the work or cause such infringing works to be made (termed “direct infringement”). A person or party knowing that copyright in a work subsists, who nevertheless deals in or imports, sells or distributes unauthorised copies of the work also infringes copyright (termed “indirect infringement”).
 
Copyright can be curtailed by order of court (by means of an interdict) and the court can award damages (which can be substantial and punitive) against an infringer.
 
Furthermore, copyright infringement can in prescribed circumstances constitute a criminal offence in terms of which an infringer could face a substantial fine and imprisonment.
 
Conclusion

There are four main and distinct and different categories of intellectual properties, namely, patents, designs, trade marks and copyrights. Each category is governed by its own legislation being the Patents Act,1978, the Designs Act 1993, the Trade Marks Act 1993 and the Copyright Act ,1978. A fifth speciality, plant breeders’ rights are protected by the provisions of the Plant Breeders’ Rights Act, 1976.
 
These Acts are directed at  recognising, protecting and rewarding different manifestations of the ideas, conceptions and insights of the human intellect when reduced to a distinct physical form. The laws concerned are not without complexity and guidance from a suitably qualified practitioner at the earliest possible stage is both prudent and highly recommended. Otherwise potential hazards such as the absolute novelty requirement attached to patent and designs before disclosure and many others can be overlooked and potentially valuable rights destroyed as a result.



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