NB: The answers set out here are simplifications which are supplied for guidance only. You should always consult a patent attorney before making any decisions relating to designs and other aspects of intellectual property.
The South African Designs Act 195 of 1993 provides for the registration of designs applied to articles intended to be multiplied by industrial processes. Designs relate to appearance, i.e. they are about the shape, form, pattern, ornamentation and/or configuration of a product or article. A registered design is essentially protecting features which appeal to the eye. (In this respect, designs differ from patents. This is explained further here.)
A design will not be registered in respect of:
The South African Designs Act 195 of 1993 provides for the registration of aesthetic designs and functional designs*.
An aesthetic design is defined as "any design applied to any article, whether for the pattern or the shape or the configuration or the ornamentation thereof, or for any two or more of these purposes, and by whatever means is applied, having features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof." The duration of an aesthetic design is fifteen years from the date of application, subject to the payment of annual renewal fees.
A functional design is defined as "any design applied to any article, either for the pattern or the shape or the configuration thereof, or for any two or more of these purposes, and by whatever means it is applied, having features which are necessitated by the function which the article to which the design is applied, is to perform, and includes an integrated circuit topography, a mask work and a series of mask works." The duration of a functional design is ten years from the date of application, subject to the payment of annual renewal fees.
An aesthetic design:
A functional design:
*Note: The concept of a functional design is peculiar to South African law and does not exist in other countries, where design protection is only available for features which have some aesthetic appeal.
In contrast to patent rights which protect the principles of operation and technical features underlying a process or product (the invention), registered design rights protect only the physical form of an article of manufacture. As a result, the protection afforded by a registered design is generally narrower in scope than that obtained by way of a patent.
The scope of protection which is conferred by a registered design is dependent on how close the closest prior art is to the design. If one’s design differs only in small respects from similar previous designs, the scope of the protection that it provides will be correspondingly narrower.
Patent protection and registered design protection are not mutually exclusive. Patent and design applications can be filed for the same product (e.g. to protect the working and the appearance of the product, respectively).
Registration can be obtained for a wide variety of designs such as industrial products, handicraft items, technical and medical instruments, packages and containers, furnishing and household goods, clothing and textiles, electronic devices, motor vehicles, jewellery and other luxury items as well as the architectural appearance of a structure.
An application for a design should preferably be filed before the design is disclosed to the public; however, if the design has already been released to the public an application can still be filed up to six months after the date of said release. (NB: This dispensation does not apply to patents.)
A South African registered design has effect only in South Africa. To obtain protection in other countries, separate applications have to be filed in such countries as well. The foreign applications have to be filed within 6 months of the date of filing of your South African application.
In order to obtain protection for your design in other countries, a separate application for the registration of your design must be filed in each country where protection is sought.
WIPO’s Hague System provides a practical business solution which enables applicants to file a single international application for up to 100 designs in a large number of territories instead of filing in each country individually. As of the date of writing, South Africa is not yet a member of the Hague Convention but it is worth checking the latest status with your attorney when considering design protection.
Certain regions also provides a mechanism to apply for protection of designs in a number of countries through a single application e.g. the African Intellectual Property Organisation (OAPI) and the African Regional Intellectual Property Organisation (ARIPO), the Benelux Office for Intellectual Property (BOIP) and the European Union Intellectual Property Office (EUIPO).
The 2017 price of filing a single design application in a single class through Moore Intellectual Property is R7,000.00 (exclusive of VAT).
While not recommended, you are legally permitted to prepare and file your own design application without the assistance of an attorney. This can be done online at the South African Designs Office at a cost of R240. The relevant web address is http://efile.cipc.co.za/Pages/Login.aspx . You will first need to open an account with the CIPC and deposit the necessary funds.
When filing a patent application it is often wise to file an application for a design registration at the same time since designs are registered with minimal delay. This strategy is particularly valuable if it is anticipated that your product may be copied soon after the launch of the product into the market. Although registered design rights are narrow in scope compared to patent protection, registered design rights may provide strong protection against blatant copying and competitors unfairly benefiting from your design efforts.
A design is deemed to be new if an application for registration is submitted within six months after the release date. Therefore, the design proprietor is free to disclose his design publicly, e.g. by marketing and/or selling articles embodying the design, for up to six months prior to submitting an application for design registration.
There is no legal requirement that you have to obtain design protection before you can market a product with the design. In other words, it is not compulsory to register a design. However, if you do not seek design protection you will lose your exclusive rights to the design, and will effectively be gifting your design to the public so that anyone may exploit the design to their own benefit without needing to ask your permission or give you any financial consideration or recognition in return.