Sunsmart Products (Pty) Ltd v Flag and Flagpole Industries (Pty) Ltd t/a National Flag
 3 All SA 206 (T)
Transvaal Provincial Division
7 November 2005
BR Southwood J
M Snyman and D Cloete
. Editor's Summary . Cases Referred to . Judgment .
Intellectual property Patents and design Infringement of Proprietary rights conferred by Patents Act 57 of 1978 and
Designs Act 195 of 1993 Requirements for proof of infringement set out.
Both parties to this case manufactured and distributed flying banners. The plaintiff claimed a final interdict and
ancillary relief on the grounds of the defendant's infringement of its design registration.
In terms of the Patents Act 57 of 1978 ("the Act"), the plaintiff was the owner of a patent relating to a flag
construction. It was also the proprietor in terms of the Designs Act 195 of 1993 of an aesthetic design applicable to
Each of the parties called expert witnesses, and the only real disputes arose from such expert testimony.
Held In terms of section 45(1) of the Act, a patentee has the right to exclude other persons from making or using
The first issue for determination was whether the defendant's admitted manufacture and marketing of flags or
banners infringed the plaintiff's rights arising out of its patent and design registration. This required a comparison to
be made between the defendant's product and the plaintiff's registered patent and design.
For infringement it must be established that all of the integers or part of the essential integers or features of the
claim have been taken. The defendant contended that the banners manufactured and sold by it did not infringe the
claims of the patent because some of the integers of plaintiff's claim were not present. In comparing the banners of
the respective parties, the Court found that one of the integers of plaintiff's patent was absent in defendant's
banner. As the absence of one integer is sufficient to defeat a claim of infringement, the Court found that
defendant's flag did not infringe the plaintiff's patent.
This led to the remaining issues for determination, viz whether the plaintiff's patent and design were invalid for
lack of novelty and lack of inventiveness. According to the defendant, the invention claimed in the patent was not
new and was accordingly not patentable under section 61(1)(c) read with section 25 of the Act. It also argued that
the patent did not involve an inventive step and was obvious. The Court dismissed those submissions, and granted
an interdict preventing the defendant from infringing plaintiff's patent.
Section 20(1) of the Designs Act 195 of 1993 a registered proprietor has for the duration of the registration, the
right to exclude other persons from making, importing, or using any article included in the class in which the design
is registered and embodying the registered design or a similar design. It was
Page 207 of  3 All SA 206 (T)
common cause that the plaintiff was the registered proprietor of the design in question and that the defendant had
made, used and disposed of articles which fell within the class in respect of which the design was registered. The
only issue was whether the articles made, used and disposed of by the defendant embodied the registered design
or a design not substantially different from the registered design. This required a comparison between the
defendant's allegedly infringing articles and the registered design. The defendant's main defence was that the
plaintiff's design was invalid because it was not registrable in terms of section 14 of the Designs Act in that it did
not meet the requirements of novelty and originality.
There being no substantiation of the lack of originality challenge, the Court considered only the defence that the
design lacked novelty. The enquiry in that regard was a twostage one. Firstly, it must be determined whether the
occurrence or disclosure alleged to have anticipated the design qualifies as an effective anticipation. Secondly, (if
the occurrence or disclosure qualifies as an effective anticipation), it must be determined whether the anticipation
destroys the novelty of the design. The Court accepted from the evidence adduced, that the plaintiff's design was
not novel, and plaintiff's action in respect of its design was dismissed.
For Patents and Inventions see:
· LAWSA Reissue (Vol 20(1), paras 55262)