Functioning to exclude protection: BMW v Grandmark


Muhammed Vally

BMW AG v Grandmark International (Pty) Ltd 2014 (1) SA 323 of the South African Supreme Court of Appeal (SCA) is likely to have reduced the confidence of original equipment manufacturers (OEMs) to compete in the local market as holders of South African design registrations.

The South African Designs Act 195 of 1993 provides for aesthetic and functional design registrations. The former are defined by features that appeal to and are judged solely by the eye; the latter are defined by features necessitated by their function.

In this case, BMW as aesthetic design rights holder, was denied relief in a quo proceedings. Under appeal, it sought a declarator establishing infringement. The main enquiry (aside from trademark issues) was whether the BMW-registered designs for a bonnet (hood), a grille, a headlight assembly and a front bumper (fender) qualified as competent aesthetic subject matter under the act, despite their inherent functionality. The applicant for revocation averred that the designs did not qualify for registration under Section 14 of the act.

Although there could be both aesthetic and functional features present in a single design, functionality as may be present in aesthetic design registrations are excluded from protection, and functional design registrations do not protect any design that is in the nature of a spare part for, inter alia, vehicles.

design; South African Supreme Court; BMW