Product packaging is vital to any organisation as often plenty of time and effort is spent developing the design of such packaging which may serve as a marketing and/or functional instrument. Packaging, in essence, is the science, art and technology of protecting products for distribution, storage, sale and use.
Packaging may comprise of various materials that may be in different shapes, forms and colours. Particular packaging may be designed for a specific product based on numerous requirements. In addition to this, designers often design their packaging in order to stand out from competitors and to catch the attention of a consumer – does everyone else put their soup in a can? The resources spent designing packaging for a product is costly and is thus considered to have tremendous value to an organisation. Packaging can also indicate the origin of the product as certain designs may be distinctive to a specific organisation thus assisting a consumer in their choice of product purchase.
The food and drink industry is a notoriously crowded and competitive market. Organisations investing time, effort and resources into packaging that does more than just keeping the product safe and unspoiled in addition to being visually attractive often reaps the benefits of standing out to consumers when faced with an often overwhelming number of choices. But how do these organisations protect the intellectual property present in their packaging after spending so much time, effort and resources?
Frequently, an overlooked method of protection is that of design registration. Although shapes, colours and other non-traditional packaging elements can theoretically be protected by trade marks, in practice, obtaining a registered trade mark for these non-traditional trade mark elements is often difficult making it a lengthy and expensive process, with no guarantee of success. By contrast, a design registration is comparatively quick and easy to obtain. While the duration of protection of design rights is limited compared to trade marks (which can be renewed indefinitely) a valuable intellectual property right to enforce against competitors who may take inspiration from a successful and aesthetically pleasing product. Designs are under-utilised and can be an effective weapon against early knock-offs.
Many inventors are frequently confused between the protection afforded by a patent versus the protection afforded by a registered design application. In a nutshell, a registered patent protects a new invention (the new way in which something works/ a new underlying concept) whereas a registered design application protects the new appearance or look and feel of a product. That being said, if a new product works in exactly the same way as a product already on the market or in the public domain it will not be eligible for patent protection (as it is not novel and inventive). However, should this new product have a new appearance, it may be protected through a South African design application (in spite of the product working in the same way as an existing product).
In South Africa, the registration of a design is governed by the Designs Act No.195 of 1993 (the “Act”). This Act distinguishes between two types of designs, namely, aesthetic and functional designs. Aesthetic designs are judged solely by the eye and relate to designs applied to articles in terms of the pattern, shape, configuration or ornamentation of the design. Functional designs have features that are necessitated by the function and include integrated circuit topography and mask works related thereto.
For a design to be registrable, it must be:
• new / novel (i.e. not available to the public anywhere in the world by written or oral description, by use or in any other way – anticipating material is known as prior art); and
• in respect of aesthetic designs: original; or
• in respect of functional designs: not common place
Despite the novelty requirement, provided the applicant claims a release date, a design application can typically be filed within 6 months following disclosure of the design to the public. An aesthetic design registration has a duration of 15 years and a functional design registration has a duration of 10 years from the date of application and subject to paying the renewals fees when due.
Once registered, the design will afford the owner of that design the exclusive right to exclude others from 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. Crucially, this is a ‘monopoly’ right and serves great importance in stopping knock-off or lookalike products that can affect your sales.
It is advisable that you consider filing for design (and/or other intellectual property) protection early in your product’s lifecycle to provide you the most protection and to place yourself and your company in the best position to challenge those seeking to copy or knock-off your product.
For more information on what is the best route to follow in order to protect your intellectual property and for assistance in filing for such protection contact Claire Gibson-Pienaar firstname.lastname@example.org.
This article is for general information purposes and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact us At DKVG Attorneys for specific and detailed advice.