Registered trademarks have in the past often been considered the only way to protect icons, logos, graphic symbols, surface patterns and ornamentation which we will collectively call logos. However, logos are increasingly being protected as both a trademark and a registered design, especially since the inclusion of class 32 in Schedule 3 of the Design Regulations.
The South African Design registration system makes provision for the registration of two types of designs, namely aesthetic designs based on features of pattern, shape, configuration or ornamentation of an article which appeal to and are judged solely by the eye, and functional designs based on features of pattern, shape or configuration of an article which are necessitated by the function the article is to perform. Aesthetic designs, designated with the letter A, have a term of 15 years and functional designs, designated with the letter F, have a term of 10 years.
South African designs are classified in accordance with the Locarno classification system (albeit a more simplified version thereof). In December 2010, a revised Schedule 3 of the Design Regulations was published in the Patent Journal. This Schedule sets out an amended classification system for design classifications wherein specific mention is made of class 32, which was a new class added to cover 'graphic symbols and logos, surface patterns and ornamentation', and class 14-04 for screen displays and icons.
In light of the above, there is clearly an overlap between trademarks and registered designs, specifically in respect of logos and icons, which could be filed as both.
Unlike trademarks, in order to register a design application, the 'article' must be new or it must only have been made available to the public during the 6 months preceding the application (the release date). When filing a design application, it is also possible to claim priority from a foreign application, provided the South African application is filed within 6 months from the priority date. It is further not possible to file a single design application covering multiple articles (as in the case of a European application) and a separate application would need to be filed for each article.
Shapes of products and of their packaging as well as other 3D signs can certainly be protected through trademark and design Law. Protection afforded by both types is different, but not contradicting. Principles of trademark and design laws may overlap as applied to the same 3D object. However, such principles are not mutually exclusive and rights can perfectly 'accumulate' and be complementary.
The Designs Act essentially determines the novelty factor in the shape or configuration of a product or pattern or ornamentation applied to an article whereas the purpose of protection of a product under the Trademarks Act, is to identify a particular trade origin in connection with specific goods and/or services. The shape of a product or container can serve as a source indicator under Trademarks Act and can also be a novel design fulfilling the criteria of registrability under the Designs Act. Thus, dual protection from both design and trademark laws may coexist.
Registering a logo as a design right can have many advantages. Firstly, in South Africa registered design applications are not substantively examined and are thus granted relatively quicker than their trademark counterparts. As a result of this, immediate protection to a new logo/brand will be obtained whilst the logo/brand acquires the distinctiveness on the market which is necessary for trademark registration.
Upon publication of the design application, it is granted. There is no opposition period and therefore no prosecution costs.
Generally, fewer design applications than trademark applications would need to be filed in order to obtain protection, as there are fewer classes and as mentioned above, the applications are not classified in accordance with sub-classes, only main classes are used, covering a broader range than in the case of trade marks. Further, designs are not limited by colour and are generally filed in greyscale or black and white.
Furthermore, once granted, there is no obligation to use the article being the subject of the design right. Unlike trademarks, it cannot be revoked on the basis of non-use.
In conclusion, design rights would both complement and improve upon the protection provided by trademarks and a well thought-through filing strategy should consider both types of rights in order to achieve the best possible protection for the brand.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
