Omnibus-type claims in design rights
Happily, another decision (Chespak v MCG Industries) on similar subject matter was made, in August 2014, bringing much-needed certainty to the issue of functionality of registered South African designs.
The case concerned an appeal from a decision that granted an interdict against infringement of a local manufacturer’s registered aesthetic design. Two main issues drove the appeal, namely that if any feature of the aesthetic design registration performs any function, that feature is functional in nature and has to be excluded in determining aesthetic design right merit. This applies to a greater degree, the argument went, if the design right owner opted to use a so-called omnibus-type definitive statement in defining its monopoly.
This type of claim typically reads: “The features of the design for which protection is claimed reside in the shape and/or configuration and/or ornamentation and/or pattern as applied to article X, substantially as shown in the accompanying illustrations.”
The appellant’s contention was that the use of an omnibus-type definitive statement identified no specific feature to enable the general public to identify what the scope of protection is, thereby making the right itself a nullity. Further, the appellant contended that the absence of certainty in relation to the claimed monopoly meant that it had to consider every feature of the design, which in its view afforded it a basis on which to pry open its argument on functionality of each individual feature.
A bench of three judges disagreed on appeal. In disposing of the appellant’s criticism of the use of omnibus-type definitive statements, the judges referred to the ruling of former Judge Hugh Laddie in Ocular Sciences v Aspect Vision Care (1997), which was later applied by the Full Bench in the Supreme Court of Appeal in Clipsal and Another v Trust Electrical (2009), which accepted the omnibus-type statement in local practice.
"One would indeed be hard-pressed to find an aesthetic design that is completely free of the performance of any function."
Laddie’s reasoning included that the omnibus-type statement does not isolate any aspect of the design by claiming novelty or originality in any particular feature and that the proprietor can choose to assert the design right for the whole of the design or part of it.
This is as broad as one can permissibly construct the monopoly under the South African Designs Act 193 of 1995.
The court then turned to deal with the functionality argument, reasoning that the scope of functionality exclusion within the aesthetic context does not extend to features serving a functional purpose and also having aesthetic appeal. The mere fact that a feature of a design or the design itself performs some function is not decisive.
According to the court, the real test is whether the design’s function, or the article to which the design is applied performs, dictates or necessitates its shape or configuration. In other words, the court, in deciding the question, must consider whether the feature is included as part of the article (or the design) solely or purely for the reason that it performs a function, or if that article or feature has added aesthetic appeal. The fact that the mentioned feature could have been manufactured to look different added to the court’s finding against the functionality argument.
On the question of infringement, the court re-stated earlier authority (Brudd Lines v Badsey 1973) that the criterion should be the impact of the whole of the design on the eye. A minute analysis for possible differences between the design and the infringing product (in the context of omnibus statements) is inappropriate. No doubt there would be differences in the infringing product as any infringer would attempt to camouflage plagiarism by introducing differences. If the design when viewed as whole shows unmistakeable similarity beyond argument, infringement would be established.
The recent decision should bring comfort to the workshops of OEM designers as it has provided certainty in a manner that strings together relevant considerations of the functionality versus aesthetic designs argument in a single case. One would indeed be hard-pressed to find an aesthetic design that is completely free of the performance of any function, whether such function is to provide support, embellish or merely look pretty. It is a good decision and in line with my comments made in the BMW case.
Muhammed Vally is a patent director at DM Kisch. He can be contacted at: muhammedv@dmkisch.com
