New designs class 32 not so classy?

Furthermore, a new class 32 for "graphic symbols and logos, surface patterns, ornamentation" was added, class 14 was amended to include a subclass 14-04 for screen displays and icons, and class 99, entitled "miscellaneous" was deleted.

Filing of design applications important

Filing a South African-registered design application for a particular design in the appropriate class, or filing a number of design applications for a particular design in various appropriate classes, is important. The reason for this is quite simple. In terms of section 20(1) of the Designs Act 195 of 1993, the effect of the registration of a design is to grant to the registered proprietor in South Africa, subject to the provisions of the Designs Act and for the duration of the registration (a maximum of 10 or 15 years depending on whether the design is a functional design or an aesthetic design) the right to exclude other persons from the making, importing, using or disposing of any article included in the class in which the design is registered and embodying the registered design or a design not substantially different from the registered design. The lofty ideal, as set out in section 20(1), is to allow the proprietor to have and enjoy the whole profit and advantage accruing by reason of the registration.

The classification system of schedule 3 is a simplified version of the ninth edition of the International Classification for Industrial Designs under the Locarno Agreement of 1968, as amended in 1979. The ninth edition was issued in 2009. The Registrar of Designs thus thought it appropriate to amend schedule 3 to remain in line with the International Classification for Industrial Designs, which also includes a class 32. This may, however, not have been such a classy idea as it can be argued that the registrar acted beyond the scope of his powers.

A fundamental dichotomy

There appears to be a fundamental dichotomy between the Designs Act on the one hand and, on the other, the concept of registered designs for screen displays and icons, graphic symbols and logos, surface patterns and ornamentation, when not incorporated into a particular article. A careful reading of the Designs Act shows that an underlying principle running as an unbroken thread through the entire Act is the concept of a design - for which protection is sought - being applied to an article with tangible form and, in fact, to an article of manufacture intended to be multiplied by an industrial process.

Thus, for example, the definitions for both an aesthetic design and a functional design contained in the Act refer to "any design applied to any article". Section 14(4) states that designs for articles which are not intended to be multiplied by an industrial process shall not be registrable under the Act. Section 14(5)(a) stipulates that no feature of an article, in so far as it is necessitated solely by the function which the article is intended to perform, can be protected by way of a design registration for an aesthetic design. Section 20(1), as set out above, refers to prohibited acts in relation to any article included in the class in which a design is registered. It is difficult to perceive how a screen display or an icon, a graphic symbol or the like, can be an article on its own. When displayed on a screen, an icon or logo or the like surely can also not be said to be an article of manufacture intended to be multiplied by an industrial process.

More vulnerable to attack?

It appears that a class 32 registration for a design for a logo or the like, being not limited to a particular article, will be broader in scope than a registration in a class for an article which embodies the logo. However, in the writer's view, such a class 32 registration may be more vulnerable to attack than a registration in a class for an article which will clearly be produced by an industrial process and which embodies the design. The proprietor of the design should, thus, decide if scope of protection or better immunity against attack is more desirable for the proprietor's design registration and proceed accordingly.

Naturally, and budget permitting, the cautious approach would be to file a South African registered design application for a logo or similar screen display in the class covering articles which will incorporate or display the logo, and also in class 32. For example, a registered design application intended to provide protection for an icon or graphic symbol to be displayed on a cellular telephone screen should preferably be lodged in class 32 and in class 14 for recording, communication or information retrieval equipment. The articles to which the design is applied can for purposes of the class 14 application be described as "display screens" or some similar article of manufacture.

In the same way, a design application for a logo to be printed on a T-shirt should be filed in class 32 and in class 2 for articles of clothing and haberdashery. For the class 2 application, the articles can simply be identified as "articles of clothing". For the class 32 applications, the articles to which the design is applied can be identified, for example, as "graphic symbols" or "logos" or the like. In addition, consideration should be given to filing a trade mark application for the icon or graphic symbol.