The drawing is virtually identical to the drawing of the embodiment of the invention in patent 97/10535. The
only difference is that the drawing
Page 209 of [2006] 3 All SA 206 (T)
of the embodiment indicates the seam of the flag by means of a dotted line. The drawings are reproduced as
annexure "A" and annexure "B" to this judgment.
[4] The plaintiff called two witnesses, Francois van der Watt and the plaintiff's managing director, Walter Bailey,
who was also called as an expert. The defendant called Michael Clingman its managing director who also
gave evidence as an expert. None of the witnesses' evidence was seriously challenged and it was not
argued that any of the witnesses was unreliable. The evidence as to the defendant's manufacture and sale
of the flying banner and the plaintiff's attempts to prevent this is not disputed. The only real disputes arise
out of the expert testimony. These will be referred to, if necessary, in the course of this judgment.
[5] Until 2003 the plaintiff manufactured and marketed a "flying banner" which is depicted in exhibits K and L
("the banner"). A lifesized banner was erected in court and is exhibit D. Exhibit K is a photograph of exhibit
D. In late 2002 or early 2003 the plaintiff discovered that the defendant was manufacturing and marketing a
banner which the plaintiff considered to be an infringement of its patent and design rights. A lifesized
banner manufactured by the defendant was erected in court and is exhibit C. Exhibit J is a photograph of
exhibit C. After the parties met unsuccessfully to resolve the problem, litigation ensued. In June 2003 the
plaintiff launched an application in the Court of the Commissioner of Patents seeking a final, alternatively, an
interim interdict, and ancillary relief on the grounds of the infringement of patent 97110535 and an
application in the High Court seeking a final, alternatively, an interim interdict, and ancillary relief on the
grounds of infringement of design registration A97/1155. The two applications were heard by Claassen J on
10 March 2004. Claassen J granted an order interdicting and restraining the defendant from infringing design
registration A97/1155 pending the determination of the application and ordered that costs be in the cause.
(It has not been explained why the order was granted pending determination of the application. The notice
of motion stated that the interim interdict was sought pending the outcome of an action to be instituted.)
Claassen J postponed the application for relief on the grounds of infringement of patent 97/10535 sine die
and ordered that the costs of that application be reserved.
[6] In February 2004 the plaintiff instituted the action under case number 97/10535 in the Court of the
Commissioner of Patents and the action under case number 7385/04 in the High Court. On 13 September
2005 the plaintiff withdrew the application for relief on the grounds of infringement of patent 97/10535 and
tendered the defendant's taxed costs. The defendant accepted the tender and the application was duly
withdrawn.
[7] The primary issues to be decided in these cases are
(1)
whether the defendant's admitted manufacture and marketing of flags or banners (exemplified by
exhibits C, J and L) infringes the plaintiff's rights arising out of patent 97/10535 and design registration
A97/1155;
(2)
whether the plaintiff's patent 97/10535 and design registration A97/1155 are invalid because of lack of
novelty; and
Page 210 of [2006] 3 All SA 206 (T)
(3)
whether the plaintiff's patent 97/10535 is invalid because of a lack of inventiveness.
The first issue requires a comparison to be made between the defendant's product (exhibit C) and the
plaintiff's patent and design, as registered see Cointreau et Cie SA v Pagan International 1991 (4) SA 706 (A)
at 710H and 711G712B: Weltevrede Nursery v Keith Kirsten's (Pty) Ltd and another 2004 (4) SA 110 (SCA)
paragraph 8 [also reported at [2004] 1 All SA 181 (SCA) Ed]. The second requires a similar comparison to
be made between the alleged anticipatory material and the plaintiff's patent and design, as registered.
The third requires a consideration of the inventiveness of the patent in the light of the prior art.
[8] The defendant's banner or flag (exhibit C) consists of a glass fibre pole which tapers to a point at and can be
bent into an inverted U at its upper end. Onto this pole, under the inverted U, is attached a piece of yellow
material in the shape of an inverted teardrop. This piece of material has a sleeve which runs up one side and
over the top of the inverted U. The material is attached to the pole when the pole is inserted into the sleeve.
In order to be fully inserted the pole must bend to follow the sleeve around the Ushaped material. The
natural tendency of the pole is to straighten and this creates tension in the material which prevents the pole
from straightening. A cord is attached to the bottom of the sleeve near the base of the pole. This is used to
pull the sleeve towards the base of the pole so that it cannot slide up the pole and reduce the tension in the
material. Another cord runs along the other side of the material from the end of the pole at the point of the U
to the bottom of the sleeve near the base of the pole. This cord assists in maintaining the tension of the
whole construction including the tautness of the material. The lower end of the pole is inserted into a stand
which enables the construction to rotate on its axis. The yellow material bears the marketer's message. The
construction is intended to be used as an alternative, easily transportable, advertising medium.
[9] Patent rights
In terms of section 45(1) of the Patents Act, the patentee has, subject to the provisions of the Act, for the
duration of the patent, the right to exclude other persons from making, using, exercising, disposing or
offering to dispose of, or importing the invention so that he or she shall have and enjoy the whole profit and
advantage accruing by reason of the invention. In terms of section 65(1) of the Patents Act a patentee may