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of novelty. 10 This principle is also well established in patent law and as Pollock B had said more than a
century ago, the Designs Act was intended to add to the Patent Act by making that which was not patentable
the subject of a
Page 1087 of [2007] 4 All SA 1082 (SCA)
design.11 There is nothing in the Act to justify a departure from this principle especially since obviousness is
not a ground of invalidity of a design. A design is not novel if it forms part of the prior art meaning that it is
to be found in the prior art and not if it can be patched together out of the prior art.
[14] This does not mean that absolute identity has to be shown; only substantial identity is required. Immaterial
additions or omissions are to be disregarded, so, too, functional additions or omissions.12 That is why it is
usually said that an ordinary trade variant is not sufficient to impart novelty. This principle is well illustrated by
the facts in Schultz v Butt.13 The design in issue related to a boat and differed from a previous design by the
addition of what was assumed to be a novel and original window structure. This addition did not make the
claimed design new. Basically its function was to protect the occupants against spray and wind and since it
was an ordinary trade variant and since the design as a whole was not substantially novel, the design was
held to be invalid.14
[15] That brings me to the second finding of the High Court, namely that the design is merely a trade variant of
similar products. The problem is, however, that the court did not identify the similar products. The first
document relied upon by the respondents to destroy novelty shows a square cover plate for a single socket
with a rectangular hole for a switch. The second is also a square cover plate but the switch has two press
points. The third is similar to the first except that a swivel switch is shown. The fourth is simply the double
socket variety of the first. The fifth consists of what the present registration certificate calls a surround but it
is rectangular, the sides are at a 90 degree angle and they all have the same width. The next one is for a
single switch assembly with no socket holes and the form of the switch is the same as that shown in the
drawings, which is not unexpected in view of the fact that the applicant for that registration is the present
proprietor's predecessor in title. There is also one showing the same type of switch but as a double switch.
[16] In conclusion there is US Patent 327 212 which relates to an ornamental design for a wall plate for an electric
wiring device, in other words, for a surround. It has two embodiments of which the second is material and is
reproduced as an annexure to this judgment. It shows a surround that is substantially identical to the
surround in the drawings because the outer perimeter is square whereas the inner boundary (where a
covering plate could be placed) is rectangular and the sides are all
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convex, sloping from the inner border to the outer border. The argument for the respondents is that this
document discloses the design in issue because it permits one to place any socket design within the
surround. Although attractive at first blush, the argument has to fail because it means that the more general
a prior disclosure is, the easier it anticipates, whereas the opposite is true: the more general the disclosure
the less likely it renders the
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particular design identifiable.15 There is another aspect and that is that the inner border of this surround has
a clearly defined frame, something lacking in the registered design which leads to the consideration of
another test: that which infringes if later, anticipates if earlier. 16 I find it difficult to envisage that this design
could be said to be to be an infringement of the registered design in issue.
[17] I therefore conclude that the high court erred in finding that the design lacked novelty. But this exercise was
nevertheless important for another reason. The definitive statement and the drawings have to be assessed in
the light of the state of the art to determine the degree of novelty achieved. This is so because where the
measure of novelty of a design is small the ambit of the "monopoly" is small.17 As Burrell suggests, to
consider the definitive statement without regard to the prior art would eviscerate its purpose.18
[18] The high court also held that the design was not original as required by the Act. Originality, it held, requires
that the design has to be substantially different from what has gone before, so as to possess some
individuality; it has to be special, noticeable, and capture and appeal to the eye. For this the court relied on
Malleys Ltd v JW Tomlin (Pty) Ltd (1994) 180 CLR 120, a judgment of the High Court of Australia. The judgment
is not authority for the proposition. The main issue was whether the design was altogether too vague to
qualify for registration. It was in this context that the court had regard to the factors mentioned, including the
individuality of the design and it concluded on the facts that "there is sufficient individuality of appearance to
justify registration if the design was new or original". Another aspect of the judgment that should be noted is
that the Australian Act required that a design had to be "new or original" and not (as our Act now reads) that
it has to be "new and original". Because the court had found that the design was new it did not find it
necessary to consider whether it was original (in whatever sense of the word).
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[19] Because of the difference in wording and underlying structure of design statutes older and foreign authorities
must be read in context.19 The UK Designs Act 1842 spoke of new and original but this was changed to new