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

• Jurisdiction: South Africa
• Judge: Harms ADP, Streicher JA, Cloete JA, Lewis JA and Cachalia JA
• Judgment Date: 23 March 2007
• Citation: 2009 (3) SA 292 (SCA)
• Docket Number: 125/06
• Hearing Date: 27 February 2007
• Counsel: B du Plessis for the appellants. MM Jansen SC for the respondents.
• Court: Supreme Court of Appeal

Harms ADP: D

[1] The proprietor of a registered design and the local exclusive licensee (the appellants) sought relief against the respondents on the ground that they are infringing their design registration. Blieden J, in the High Court, dismissed the application with costs on the ground that the design had E not been validly registered because it was not new or original; he also held that the design in any event had not been infringed. He granted the necessary leave to appeal.

[2] The design (A 96/0687) was registered under the Designs Act 195 of 1993 as an aesthetic design in class 13, which covers equipment for the F production, distribution or transformation of electricity. The Act draws a distinction between aesthetic and functional designs. The definition of the former reads (s 1(1)) -

'aesthetic design' means any design applied to any article, whether for the pattern or the shape or the configuration or the ornamentation G thereof, or for any two or more of those purposes, and by whatever means it is applied, having features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof.

[3] The articles to which the design registration applies are 'a set of electrical accessory plates with surrounds'. According to the definitive H statement protection is claimed for 'the features of shape and/or configuration of a set of electrical accessory plates with surrounds as shown in the accompanying drawings'. The drawings, which are an annexure to this judgment, show two configurations, hence the reference to a 'set' in both the title and the definitive statement. The one configuration is for I what is normally known as a cover plate for a single wall socket for a three-prong electric plug with switch and the other is a cover plate for a double socket with two switches. These cover plates are rectangular. They are both surrounded by a square plate which has a slightly convex slope. Because of the relative shape of the rectangular cover plate and the square surround only the opposite sides of the surround are of the same J width.

Harms ADP

[4] The effect of the registration of a design is to grant to the registered A proprietor the right to exclude others from the making, importing, using or disposing of any article included in the class in which the design is registered 'and embodying the registered design or a design not substantially different from the registered design' (s 20(1)).

[5] The defendant in infringement proceedings may counterclaim for the B revocation of the design registration or, by way of defence, rely on any ground on which the registration may be revoked (s 35(5)). In this case, the respondents chose the second option, namely to rely by way of defence on the grounds that the design was neither new nor original as required by s 14(1)(a), which are grounds for revocation under C s 31(1)(c). In addition they denied infringement, alleging that their products do not embody either of the two designs and differ substantially from them.

[6] The respondents are making and marketing electrical accessory plates with surrounds under the name Lear G-2000 series single D electrical socket SYZ - 16 (100 x 100) and double electrical socket S2YZ2 - 16 (100 x 100). These fall in the same class as the protected designs, which means that the first issue to determine is the scope of the design registration, which in turn requires a construction of the definitive statement and the drawings. [1] The purpose of the definitive statement, previously known as a statement of novelty, is to set out the features of E the design for which protection is claimed and is used to interpret the scope of the protection afforded by the design registration. [2]

[7] The definitive statement in this case is of the omnibus type because it does not isolate any aspect of the design with the object of claiming novelty or originality in respect of any particular feature. As Laddie F J explained in Ocular Sciences Ltd v Aspect Vision Care Ltd [1997] RPC 289 at 422:

The proprietor can choose to assert design right in the whole or any part of his product. If the right is said to reside in the design of a teapot, this can mean that it resides in design of the whole pot, or in a part such as G the spout, the handle or the lid, or, indeed, in a part of the lid. This means that the proprietor can trim his design right claim to most closely match what he believes the defendant to have taken.

This means that the shape or configuration as a whole has to be considered, not only for purposes of novelty and originality, but also in H relation to infringement. [3]

[8] Important aspects to consider when determining the scope of the registered design protection flow from the definition of an 'aesthetic design', namely that design features have to appeal to and be judged I

Harms ADP

A solely by the eye. First, although the court is the ultimate arbiter, it must consider how the design in question will appeal to and be judged visually by the likely customer. [4] Secondly, this visual criterion is used to determine whether a design meets the requirements of the Act and in deciding questions of novelty and infringement. [5] And thirdly, one is B concerned with those features of a design that 'will or may influence choice or selection' and because they have some 'individual characteristic' are 'calculated to attract the attention of the beholder'. [6] To this may be added the statement by Lord Pearson that there must be something 'special, peculiar, distinctive, significant or striking' about the C appearance that catches the eye and in this sense appeals to the eye. [7]

[9] The respondents sought to rely on the fact that a 'set' of articles was registered by arguing that the relevant features to be considered in determining the scope of the protection are those that are common to all D members of a set. A 'set of articles' is a number of articles of the same general character which are ordinarily on sale together or intended to be used together, and in respect of which the same design, or the same design with modifications or variations not sufficient to alter the character of the articles or substantially affect their identity, is applied to each E separate article (s 1(3)). Any question as to whether a number of articles constitute a set has to be determined by the registrar (s 1(4)). The object of the provision is to enable an applicant to obtain registration for the design of more than one article for the price of one. [8] If the registrar has registered articles as a set when they in truth do not form a set it is at best F a matter for review but it cannot be raised as a defence to infringement

Harms ADP

or be a ground for revocation. [9] Can the registration as a set then be a A method of interpreting the scope of the registration? I think not. This follows not only from the purpose of the provision relating to sets but also from other definitions and especially s 1(2). A design has to apply to an 'article' which includes any article of manufacture and a reference to an article is deemed to be a reference to (a) a set of articles; (b) each B article which forms part of the set of articles; or (c) both a set of articles and each article which forms part of that set. This can only mean that each member of a set has its own individuality and must be assessed on its own and that the exercise which we were asked to undertake is not permissible.

[10] Against that background I turn to determine those features of the C two designs that appeal to the eye and are to be judged solely by the eye. There is no direct evidence about who the likely customers are (whether architects, builders, electricians or homeowners) or how the likely customer would view them but there is the evidence of the managing D director of the exclusive licensee, Mr Evans, and that of a director of the second respondent, Mr Botbol, who are both experienced in this field, and their evidence defined the issues in the case (the affidavits performing in these proceedings the function of pleadings and evidence).

[11] Mr Evans alleged that the dominant aesthetic feature of the design E resides in...