South African Court discards ‘functional’ design'
12th September, 2012
The North Gauteng High Court, South Africa upheld that contentions of an importer/supplier of spare parts to rule that spare parts sold by him as ‘replacement parts for….’ the appellant’s vehicles did not infringe design rights. The more interesting aspect of the case is that the court found that the registered designs – for bonnet, grills, fender – were neither aesthetic nor novel and were purely functional. The counter-claim brought by the defendant to revoke the registration of certain designs was also upheld.
The suit rested on two main grounds. The first being ’Comtempt of Court’ in that the defendant, in violation of a twelve year old agreement between the two parties not to sell parts of the appellant’s vehicles without proper licence. The second ground was that of infringement of design registered in respect of these parts.
The Court examined the issue of validity of the designs on the premise that if there was no infringement, contempt would be purged. It stated that as far as aesthetic elements - ‘appeal to the eye’ were concerned, none had been distinguished by the appellant. The appellant had stated that the spare parts sold could not function as matching parts without embodying the design of the (alleged) infringing parts.
Under South African law, Section 14(5) of the Designs Act, bars registration of any feature of an article in so far as it is necessitated solely by the function which the article is intended to perform. Also spare parts are recognised as being functional by their very nature as per Section 14(6). The Court also found no novelty in the designs saying that they were a regular feature of the appellant’s vehicles and hence formed part of its own prior art.
In respect of trademarks infringement, it held that by indicating in the invoice the product was not manufactured under license from the original manufacturer, no confusion was caused to the public. The use of BM as part of the code in packaging was merely to identify the product and not the source.[Bayerische Motoren Werke Aktiengesellschaft v Grandmark International (Pty) Ltd and another - (50212/2010)  ZAGPPHC 139 (25 July 2012)].