[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 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 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."
Page 1085 of [2007] 4 All SA 1082 (SCA)
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 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
View Parallel Citation
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 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 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
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 separate article (section 1(3)). Any question as to whether a number of
articles constitute a set has to be determined by the Registrar (section 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 a
Page 1086 of [2007] 4 All SA 1082 (SCA)
matter for review but it cannot be raised as a defence to infringement
View Parallel Citation
or be a ground for revocation.9 Can the registration as a set then be 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 section 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 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 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 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 resides in the shape and configuration of
the "substantially square" surround and the rectangle contained therein, and the shape and configuration of
the socket holes and their associated switches, relative to the rectangle. He added that the secondary and
further aesthetic features are the slope of the square surround at the top and bottom and on the left and
righthand sides and the annular recesses surrounding the socket holes. Mr Botbol's response was not
enlightening. He did not deny any of these allegations, especially not those about the relative value of the
different features. He added though that curvature of the square surrounds is convex.
[12] As mentioned, the High Court held that the design was not new. In coming to this conclusion the court had
regard to eight prior art documents, each showing "that various elements of the registered socket (sic!) were
all previously part of the art". The court added that the registered "sockets" show nothing "novel or original"
and that they are no more than an ordinary trade variant of similar products.
[13] Over the objection of the appellants the High Court held that it was entitled to mosaic different pieces of prior
art. This is a surprising conclusion. It is old law that one is not entitled to mosaic for purposes