Cincinnati Grinders Inc v BSA Tools Ltd (1931) 48 RPC 33
1088
Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166
1090
Farmers Build v Carier [1999] RPC 461
1090
Incandescent Gas Light Co v De Mare etc System 13 RPC 301
1090
Jones & Attwood Ltd v National Radiator Co Ltd (1928) 45 RPC 71
1085
Landor & Hawa International Ltd v Azure Designs Ltd [2006] EWCA Civ 1285
1088
Le May v Welch (1884) 28 Ch D 24
1087
Moody v Tree (1892) 9 RPC 333
1087
Ocular Sciences Ltd v Aspect Vision Care Ltd [1997] RPC 289
1084
Oren and Tiny Love Ltd v Red Box Toy Factory Ltd [1999] EWHC Patents
255
1085
Sebel's Applications [1959] RPC 12
1087
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Judgment
HARMS ADP:
[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 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 production, distribution or transformation of electricity. The Act draws a
distinction between aesthetic and functional designs. The definition of the former reads (section 1(1)):
"'aesthetic design' means any design applied to any article, whether for the pattern or the shape or the configuration
or the ornamentation 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 statement protection is claimed for "the features of shape and/or configuration of a
Page 1084 of [2007] 4 All SA 1082 (SCA)
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 what is normally known as a cover plate for a
single wall socket for a threeprong 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 width.
View Parallel Citation
[4] The effect of the registration of a design is to grant to the registered 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
(section 20(1)).
[5] The defendant in infringement proceedings may counterclaim for the revocation of the design registration or,
by way of defence, rely on any ground on which the registration may be revoked (section 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 section 14(1)(a), which are grounds for revocation under section
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
G2000 series single 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 the design for which protection is claimed and is used to interpret the scope of the protection
afforded by the design registration.2