Kill the copy cat

Frederick Mostert and Don MacRobert, authors of From Edison to iPod, offer this simple guide to intellectual property rights.

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The design world is awash with new creative thinkers and people who have great ideas that often get translated into commercial reality. One is always encouraged by the creative ingenuity of a new inventor, designer or entrepreneur who makes things happen – and hopefully makes some money too.

Just think about it: There are constantly new shapes and designs coming onto the market. A new motorcar, for example, entails a considerable amount of work and creativity to ensure that the design of the car is not only functional to achieve best performance, but is also catchy and appealing to the eye. Without this catchiness, motorcars wouldn't sell so well.

Even in the packaging of food products and other essential items, there are so many different products that are undergoing a change in shape or design – even the new shape of a telephone. The iPhone, for instance, has a neat design that fits easily into a pocket, with an appealing appearance to boot. However, it also contains a considerable amount of intellectual property.

In the face of this constant onslaught of new ideas, one can only really make money if one adequately protects one's ideas and creative works. Allow us to draw attention to the importance of protecting designs and copyright, as well as the brand or name that you use to sell and identify your product.

In South Africa one can obtain design protection for any new two- or three-dimensional design. Obtaining a design right gives a registrant exclusive rights over that particular design. This means that no third party can make or use a similar design. To do so could result in the user being sued by the registered design holder.

To qualify, an object must have a specific appearance that can be visually recognised and generally a design right has nothing to do with the task that an item performs. In terms of the Designs Act one can obtain protection for an aesthetic design or a functional design.

An aesthetic design is a design that performs a purely visual function, such as the pattern, shape, configuration or ornamentation of an article. The aesthetic design features are judged solely by the eye and not necessitated by the function of the article. Examples of aesthetic designs include the original design of a perfume bottle, a metal necklace, a surface decoration on a plate or the designs that appear on fabrics or cloths, such as for making clothes.

Functional designs can also apply to the pattern, shape, configuration or ornamentation of an article, but to qualify as a functional design, these must play a role in how the article performs. Functional designs include integrated circuit topographies using electronic equipment, levers, tyre treads, clamps and cogs.

The important thing about registering a design is that registration will only be granted if the design is novel. In other words, the design must not be identical to any other design that may have been disclosed to the public elsewhere in the world. Generally a design is likely to be original unless it is copied from another article (in which case it would not be new). So to achieve this novelty aspect, the design should have its own individual character.

The value of design rights lies in the statutory protection that they offer. A registered design will enable you to prevent third parties from making, importing, using or disposing of articles that embody your registered design (within the class in which the design is registered).

Registering a design is also a useful step towards protecting one's rights in a wider sense. In other words, one can use the design registration protection along with other forms of intellectual property protection. A very useful illustration is that of the Coca-Cola bottle. In 1915, the then in-house lawyer for the Coca-Cola Company in Atlanta suggested that in order to distinguish its cola product from the growing number of competitors, it would be wise for the Coca-Cola Company to have a distinct new packaging for its product. Thus was born the shape of the well-known Coca-Cola bottle. Protection was first obtained in the United States for a design (known as a design patent in the US). This would last for 14 years. During the 12th year of the monopoly, the Coca-Cola Company then applied to register its very distinctive bottle shape as a trademark. This bottle-shaped trademark has been registered in virtually all countries across the world.

Trademarks are another way of protecting intellectual property rights. A trademark can cover a word (such as Coca-Cola) or a logo without wording (such as the KFC logo), but it also covers various other shapes or designs. This is why it is possible to register the shape of the Coca-Cola bottle as a trademark. To do so means that one can then gain protection under the Trademarks Act. Unlike designs, trademarks last for 10 years and can be renewed at 10-yearly intervals in perpetuity. This is why we have some trademarks that have been with us for many years – for instance Otis, Kellogg's and Marmite.

Apart from design rights and trademarks, it is also possible to gain protection under the Copyright Act, which provides automatic protection for any work that is new. The Copyright Act covers literary works (such as books or articles), artistic works (such as drawings, logos or designs) and musical works (such as jingles). In order to ensure adequate protection, and because there is no registration of copyright, the creator of any copyrighted work must clearly date the new work and put his or her name on it. This is so that it can easily be proved who the creator of a particular work is and when it was created.

So with this brief overview of the various aspects of intellectual property and the need to bundle one's rights, we appeal to all creative thinkers and designers: Please remember to protect your intellectual property rights. Make sure that you are taking the necessary steps to protect your ideas and make money from them.

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