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intellectual property (IP)

intellectual property (IP) | 30 Apr 2021
BY Dr. Joanne van Harmelen

Product design – a corporate arm’s race?

A recent article in the Guardian highlights one of IP lawyers’ more difficult sells: the registered design. We should mention right away that the article uses the US term design patents, something we know as registered designs.

It’s a fine article and it kicks off powerfully: “In 1842 the US patent office registered 14 designs, including a bathtub and a ‘corpse preserver’. It now handles 35 000 a year. Why did this once sedate world become a corporate arms race?” There’s all sorts: the ring-pull can, the cassette tape, kitchen timers, electric clocks, locomotives, Coca-Cola vending machines, building designs for fast food companies like Pizza Hut and petroleum companies like Esso.

There’s also the historical aspect: the vast catalogue of US registrations “reflects not only the onset of mass manufacture, the rise of electrical appliances and the later ubiquity of personal electronics, but it also reveals a story of international trade and shifting global power….we see how US-created designs for cars and appliances were overtaken by innovations from Japan in the 1970s and 80s, an influx from China – with a six-fold increase in filings from Chinese companies over the last decade.”

There’s product evolution: “The mobile phone arrives as an enormous brick in the 70s, before gradually shrinking towards the tiny palm-sized flip-phone on the early 000s, then swelling into vast touch-screen slabs too big for most pockets, before coming full circle and ending with a basic compact model, with analogue buttons and a small LCD screen.”

There’s the mad-cap: one of the more interesting registrations discussed was the brainchild of the “godfather of American industrial design”, Raymond Loewy, who’s aerodynamic looking pencil sharpener was “designed to make sharpening a pencil feel as thrilling as flying a jet”. Unfortunately this “go-faster pencil sharpener never made it into production, deemed one chrome-plated, deco-styled step too far.” As the writer says: “Designers’ ambitions have often been ahead of what is technologically feasible or practically desirable.”

An interesting observation is that registered designs “have often been used as a publicity tool…someone would design a crazy thing without having a manufacturer on board so they could shop it around and get it published in magazines to raise their profile.”

Another is the suggestion that the system has “unleashed an arms race with big tech companies amassing vast arsenals of pre-emptive patents, conceived as assets to be sold or traded, as well as providing an insurance policy against any potential litigation.” The system may provide protection but it also “serves to stifle innovation.” There’s mention of the famous litigation where Apple sued Samsung for copying various features of the iPhone and was awarded USD593-million in damages.

As we said earlier, in South Africa, product design is covered by way of registered designs. The applicable South African legislation, the Designs Act, 1993, provides that designs can be either aesthetic or functional. An aesthetic design is one involving “features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof.”

The old British case of Amp v Utilux tells us that this means that the features “must be calculated to attract the attention of the beholder.” In the South African case of Omega v Swisstool, the court said that “the court should view the design through the spectacles of the customer”. Before concluding as follows: “What emerges from the analysis is, essentially, that aesthetic designs are those that invite customer selection – and customer discrimination between articles – solely by their visual appeal.”

The South African legislation also makes provision for the registration of functional designs. A functional design is defined as one involving “features which are necessitated by the function which the article to which the design is applied is to perform.”

Novelty is a requirement for both aesthetic and functional designs. In the case of an aesthetic design the test for novelty is that it must be “new” and “original”. In the case of a functional design the test for novelty is that it must be “new” and “not commonplace in the art in question.”

We’ll end by pointing out that recent statistics show that applications for registered designs in the UK showed an increase in 2020, which strongly suggests that a considerable number of people and businesses see IP rights such as designs as a way out of the gloom. If you would like to discuss a design registration issue in South Africa please contact:

Dr Joanne van Harmelen

IP | Patent Attorney

jvanharmelen@ENSafrica.com

+27 82 770 5396