or original in the UK Patents, Designs and Trade Marks Act 1883. 20 It was this latter usage that was taken
over in our 1916 Act but what was new o r original had to be assessed against prior use, publication,
registration, or patenting.21 Our Designs Act 57 of 1967 had a similar provision, which required that a design
had to be "new or original" if tested against certain
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prior art.22 In a similar statutory context Graham J held that the term was disjunctive and that what "original"
added was merely that the design had to be substantially novel.23
[20] The current Act of 1993 differs structurally from its antecedents. It requires that a design must be new and
original. Only novelty is tested against the defined prior art ("a design shall be deemed to be new if it is
different from or if it does not form part of the state of the art").24 There is no measure against which
originality has to be tested. Before proceeding, it is necessary to recall that this Court in Homecraft,25
following the House of Lords in Amp Inc v Utilux (supra), has held that a design must have, by virtue of the
definition, some "individual characteristic calculated to attract the attention of the beholder"26 and that there
must be something
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"special, peculiar, distinctive, significant or striking" about the appearance that catches the eye and in this
sense appeals to the eye.27 These requirements have nothing to do with originality. In fact, neither Amp Inc
v Utilux (supra) nor Homecraft (supra) dealt with originality. It is furthermore incorrect to equate (as the High
Court did) originality with not being commonplace in the art although that is how the concept is defined in the
UK Copyright, Designs and Patents Act 1988. The reason is obvious. The 1993 Act requires that aesthetic
designs must be new and original and that functional designs must be new and not commonplace.28
Originality and being "not commonplace", consequently, cannot mean the same. The only other meaning
'original' can bear is one that is the same or
Page 1090 of [2007] 4 All SA 1082 (SCA)
akin to the meaning in copyright law,29 something that is not farfetched if regard is had to the fact that the
1916 Act spoke of design copyright. As was said by Mummery LJ in Farmers Build v Carier [1999] RPC 461 at
482:30
"The court must be satisfied that the design for which protection is claimed has not simply been copied (eg like a
photocopy) from the design of an earlier article. It must not forget that, in the field of design of functional articles, one
design may be very similar to or even identical with another design and yet not be a copy: it may be an original and
independent shape and configuration coincidentally the same or similar. If, however, the court is satisfied that it has
been slavishly copied from an earlier design, it is not an 'original' design in the 'copyright sense'."
[21] In the light of these considerations I conclude that the respondents' case on lack of originality as adopted by
the High Court founders because it is based on an incorrect premise. This then brings me to the question of
infringement which involves a determination of whether the respondents' products embody the registered
design or a design not substantially different from the registered design. The search is not for differences but
for substantial ones.
View Parallel Citation
[22] This test is not a trade mark infringement test and the issue is not whether or not there is confusion or
deception and it would therefore be wrong to introduce concepts developed in a trade mark context such as
imperfect recollection into this part of the law. The designs test is closer to the patent infringement test. This
dictum from Incandescent Gas Light Co v De Mare etc System31 in a patent infringement context is equally
applicable to the present context:
"When, however, you come to make that comparison, how can you escape from considering the relative magnitude
and value of the things taken and of those left or varied; it is seldom that the infringer does the thing, the whole thing,
and nothing but the thing claimed by the specification. He always varies, adds, omits and the only protection the
patentee has in such a case lies, as has often been pointed out by every Court, from the House of Lords downward, in
the good sense of the tribunal which has to decide whether the substance of the invention has been pirated."
[23] Both the single and double socket articles produced and sold by the respondents have square surrounds with
rectangular cover plates. Both incorporate in general terms the registered designs, even down to the annular
recesses and the shapes and configuration of the switches. What are the differences? As Mr Evans
mentioned, the respondents' surrounds have stepped slopes on the right and left (the narrow) sides instead
of the substantially convex curvature of the registered design.32 Recognising this difference, the next
question is whether it is a substantial difference. Mr Evans's allegation that this particular feature is a
secondary feature has not been placed in issue. It is difficult to see how a difference in respect of a secondary
feature can be substantial.
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[24] The other differences are these. The position of the respondents' double socket switches is directly above the
earth socket hole whereas that of the design is closer to the upper corners of the rectangular plate. Mr Evans
said that this difference was not substantial and Mr Botbol did not deny his evaluation. The same applies to