South Africa Case Law

Bayerische Motoren Werke Aktiengesellschaft v Grandmark International (Pty) Ltd and Another (50212/2010)

Bayerische Motoren Werke Aktiengesellschaft v Grandmark International (Pty) Ltd and Another (50212/2010) [2012] ZAGPPHC 139 (25 July 2012)

Court

North Gauteng High Court, Pretoria

Case number

50212/2010

Judge

Ranchod

The court found that BMW AG failed to establish contempt of the 1999 court order, as Grandmark provided sufficient evidence to raise reasonable doubt regarding deliberate and mala fide non-compliance. Regarding the E46 design registrations, the court held that BMW AG did not prove the existence of novel aesthetic features; the designs were dictated solely by function and anticipated by prior BMW designs, rendering them unregistrable as aesthetic designs and lacking novelty and originality. The counter-application for revocation of the E46 design registrations succeeded. On trade mark infringe…

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• Registered Designs
• Designs Act
• Trade Mark Infringement
• Novelty And Originality
• Aesthetic Vs Functional Designs
• Counter Application For Revocation

Clipsal Australia (Pty) Ltd and Another v Trust Electrical Wholesalers and Another (125/06)

Clipsal Australia (Pty) Ltd and Another v Trust Electrical Wholesalers and Another (125/06) [2007] ZASCA 24; [2007] 4 All SA 1082 (SCA); 2009 (3) SA 292 (SCA); 2007 BIP 432 (SCA) (23 March 2007)

Court

Supreme Court of Appeal

Case number

125/06

Judges

Harms, Streicher, Cloete, Lewis, Cachalia

The Supreme Court of Appeal held that the High Court erred in finding that the registered design lacked novelty and originality. The court confirmed that mosaicing prior art is not permissible for assessing novelty in design law. The registered design was found to be new, as none of the prior art documents disclosed the design as a whole, and the differences identified by the respondents were insubstantial and related only to secondary features. The court clarified that originality under the Designs Act requires independent creation and not mere absence of commonality. The respondents' produc…

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• Registered Designs
• Novelty And Originality
• Designs Act 195 Of 1993
• Infringement
• Prior Art
• Remedies For Infringement

Schultz v Butt (327/84)

Schultz v Butt (327/84) [1986] ZASCA 47; [1986] 2 All SA 403 (A) (15 May 1986)

Court

Supreme Court of Appeal

Case number

327/84

Judges

Corbett, Hoexter, Boshoff, Nicholas, Nestadt

The court held that using another maker’s boat hull as a mould for commercial production was unfair competition, and it upheld copyright and design cancellation relief.

• Copyright Infringement
• Unlawful Competition
• Registered Design Cancellation
• Works Of Craftmanship
• Novelty And Originality
• Passing Off

Homecraft Steel Industries (Pty) Ltd. v S M Hare & Son (Pty) Ltd. and Another (38/84)

Homecraft Steel Industries (Pty) Ltd. v S M Hare & Son (Pty) Ltd. and Another (38/84) [1984] ZASCA 36; 1984 (3) SA 681 (A) (29 March 1984)

Court

Supreme Court of Appeal

Case number

38/84

Judges

Corbett, Kotze, Viljoen, Galgut, Howard

The court held that the appellant's registered design was valid, as it was not dictated solely by function and possessed visual appeal, particularly in the fluting. The design was not anticipated by the Osborn or Ventco elements, as they were substantially different in key visual respects. However, the respondents' fascia board did not infringe the registered design, as it differed materially in the number and shape of flutes and valleys, and the degree of novelty in the appellant's design was limited, restricting the scope of protection. The appeal and cross-appeal were dismissed, but the co…

Source excerpt

• Registered Designs
• Novelty And Originality
• Anticipation
• Infringement Test
• Designs Act 1967