MCG Industries (Pty) Ltd v Chespak (Pty) Ltd (17527/2010) [2011] ZAGPPHC 222 (6 October 2011)

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[2011] ZAGPPHC 222
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MCG Industries (Pty) Ltd v Chespak (Pty) Ltd (17527/2010) [2011] ZAGPPHC 222; 2011 BIP 284 (GNP) (6 October 2011)

NOT REPORTABLE
IN THE HIGH COURT OF SOUTH AFRICA
NORTH GAUTENG DIVISION
CASE NO: 17527/2010
DATE:06/10/2011
In the matter between:
MCG INDUSTRIES (PTY)
LTD
..........................................................................
APPLICANT
and
CHESPAK (PTY)
LTD
......................................................................................
RESPONDENT
JUDGMENT
ZONDO, J:
Introduction
[1] The applicant has brought an
application for an interdict restraining the respondent from
infringing its registered design under
registration number A2000/1414
and other relief. The respondent resists the application on a number
of grounds. I shall set these
out later in this judgment. For now
it is necessary to set out the relevant background to this
application.
Background
[2] The deponent to the applicant’s
founding affidavit, Mr Hendrik Jacobus Swanepoel, was a founding
member of the respondent
and was its managing director between 1995
and 2005. The applicant is the registered proprietor of the South
African registered
design, registration number A2000/141. For
convenience the design will be referred to as “the registered
design”.
The registered design is titled “Bottle
Carrier”. The registered design is filed and registered in
Class 9. The
applicant says that, according to the Design
Regulations of 1999, class 9 covers “packages and containers
for the transport
or handling of goods”. The definitive
statement of the registered design reads as follows:
“
The features of the design for
which protection is claimed reside in the shape and/or configuration
of a bottle carrier substantially
as shown in the photographs.
”
Various photographs of the bottle carrier,
taken from different angles, were then attached to the founding
affidavit. The photographs
and the definitive statement are part of
Annexure “HJ 52” to the founding affidavit. There is no
explanatory statement
provided in respect of the registered design.
The registered design is still current in its operation.
[3] The applicant has averred that the
respondent has, without its consent, made, imported, used, and/or
disposed of, a bottle
carrier product (“the Chespak crate”)
the shape and/or configuration of which is shown in annexures “HJS
3.1”
to “HJS 3.8” to the founding affidavit. The
applicant states that the Chespak crate embodies the applicant’s

registered design or a design not substantially different from the
applicant’s registered design. The Chespak crate is included

in class 9.
Statutory
provisions
[4] Before I can consider and decide the
questions which arise for determination in this matter, it is
necessary to refer to,
and, discuss, certain provisions of the
Designs Act, 1993 (Act 195 of 1993) (“the Act”). Just
before sec 1 of the
Act, the following appears: “to provide for
the registration of designs and for matters connected therewith”.
This
is the object of the
Designs Act. In
the definition section of
the Act (i.e. section 1) there are definitions of certain terms to
which I think I should refer at the
outset. The word “article”
is defined as meaning:
“
any article of manufacture and
includes a part of such article if
manufactured separately”.
The
word “design” is defined as meaning:
“
an aesthetic
design or a functional design.
”
The term ‘aesthetic design” is
defined in the following terms:
“
any design applied to any
article, whether for the pattern or the shape or the configuration or
the ornamentation thereof or for
any two or more of those purposes
and by whatever means it is applied, having features which appeal to
and are judged solely by
the eye, irrespective of the aesthetic
quality thereof
.”
Section 1(xi) defines a functional design
in the following terms:
“
any design applied to any
article, whether for the pattern or the shape or the configuration
thereof, or for any two or more of
those purposes and, by whatever
means it is applied, having features which are necessitated by the
function which the article to
which the design is applied, is to
perform and includes an integrated topography, a mask work and a
series of mask works
”.
[5] At 108 in Amp Inc v Utilux (Pty) Ltd
[1972] RPC 103
(HL) (“Amp Inc”) Lord Reid pointed out
that “to be protected the design must come within the
definition. Designs
which do not come within the definition may or
may not be protected by other legislation. We are not concerned with
that in this
case. The question in this case is whether this terminal
has a design which comes within this definition.” Lord Reid
went
on to say at 108 that the idea must be that there can be two
articles similar in every respect except shape, and that the novel

feature of shape which is the design has been added to the article by
making it in the new shape instead of some other shape which
is not
novel.
Lord Reid dealt in Amp Inc with words
“being features which in the finished article appeal to and are
judged solely by the
eye.” He said at 108:
“This must be intended to be a
limitation of the foregoing generality. The eye must be the eye of
the customer if I am right
in holding that the policy of the Act was
to preserve to the owner of the design the commercial value resulting
from the customer
preferring the appearance of the articles which
have the design to that of those which do not have it. So the design
must be the
one which appeals to the eye of some customers. And the
words ‘judged solely by the eye’ must be intended to
exclude
cases where a customer might choose an article of that shape
not because he thought that the shape made it more useful to him.”
Lord Reid expressed doubt whether in the
case of finished articles sold to members of the public for use by
them , this limitation
would be of much importance ( Lord Reid at108
lines 26 -27). He then said in the next sentence:
“The onus is on the person who
attacks the validity of the registration of a design. So he would
have to shew on a balance
of probability that an article with the
design would have no greater appeal by reason of its appearance to
any member of the public
than an article which did not have this
design. Looking to the great variety of popular tastes this would
seem an almost impossible
burden to discharge” (Clipsal, p.108
lines 27 - 32).
[6] In Homecraft Steel Industries (Pty)
Ltd v S.M. Hare & Son (Pty) Ltd & Another
[1984] ZASCA 36
;
1984 (3) SA 681
(A)
Corbett JA sought to give a general indication of the features
which an aesthetic design should have in order to appeal to
and be
judged solely by the eye. He did this by quoting certain passages
from the speeches of Lords Morris of Borth-Y-Gest and
Pearson in the
Amp Inc case and from the speech of Lord Avonside in another case.
The passage he quoted from the speech of Lord
Morris included the
following:
“This does not mean that the
‘appeal’ or the attraction must be to an aesthetic or
artistic sense – though
in some cases it may be. The features
may be such that they gain favour of or appeal to some while meeting
with disfavor of others.
Beyond being merely visible the feature must
have some individual characteristic. It must be calculated to attract
the attention
of the beholder.”
The passage which Corbett JA quoted from
Lord Pearson’s speech in the Amp Inc case was this one:
“The emphasis is on external
appearance, but not every external appearance of any article
constitutes a design. There must
be in some way a special, peculiar,
distinctive, significant or striking appearance – something
which catches the eye and
in this sense appeals to the eye.”
Lastly Corbett JA also quoted a passage
from the speech of Lord Avonside in the Scottish Court of Session in
the case of G.A. Harvey
& Co. (London) Ltd v Secure Fittings Ltd
(1966) RPC 515
at 518. There Lord Avonside said in part:
“The judge of the design is the eye
and the eye alone and to the eye it must appeal. The design, to
appeal, must be noticeable
and have some perceptible appearance of an
individual character. Where, as in the present instance, the design
is for a shape or
configuration of the article as a whole, the only
effective application of the design rests in making the article of
that shape
or configuration. In that situation, in order to achieve
the application of the design to an article, the article produced
must
be such as appeal to the eye as possessing, by reason of its
shape or configuration, features which distinguish it from others of

its type and class.”
Corbett JA then turned to the question of
whose eye it is that the features must appeal to and be judged solely
by. He referred
to Swisstool Manufacturing Co. v Omega Africa
Plastics
1975 (4) SA 379
(W) at 383B where Eloff J stated that it
would not be inconsistent with what had been stated in previous South
African cases:
“to hold that while the eye is to be
the eye of the court, the court should view the design through the
spectacles of the
customer.”
The Appellate Division in Homecraft Steel
Industries v SM Hare & Son
[1984] ZASCA 36
;
1984 (3) SA 681
(A) at 692 C-D
approved this approach. There Corbett JA, writing for a unanimous
Court, said:
“I think, with respect, that this
statement pithily expresses what I conceive to be the correct
approach, viz that while
the Court is ultimately the arbiter it must,
when determining these matters, consider how the design in question
would appeal to
and be judged by the likely customer of the class of
article to which the design is applied.
This visual criterion is, of course, of
cardinal importance not only in determining whether a design meets
the requirements of the
definition, but also in deciding questions of
novelty and infringement.”
[7] From the definition of an aesthetic
design it is clear that an aesthetic design is any design that has
been or is applied to
an article for any two or more of the purposes
contained in the definition of “aesthetic design”
provided that such
design has features “which appeal to, and
are judged solely by the eye”. The means by which the design is
applied to
the article are irrelevant for purposes of determining
whether or not a design is an aesthetic design. Also, the aesthetic
quality
of such features is irrelevant for the purposes of
determining whether or not the design is an aesthetic design. Where
it is accepted
between the parties that the application of the design
to an article is or was for any two or more of the purposes contained
in
the definition of an “aesthetic design”, the decisive
question in determining whether or not the design is an aesthetic

design is whether or not such design has “features which appeal
to and are judged solely by the eye”. If it has such
features,
it is an aesthetic design. If it doesn’t have such features it
is not an aesthetic design.
[8] It must be noted that the definition of
“aesthetic design” does not require such design to have
only
features that appeal to and are judged solely by the eye. Quite
clearly, if the intention of the Legislature was that all the

features of an aesthetic design must be features which appeal to and
are judged solely by the eye, it would have said so in the

definition. In fact sec 14(5) of the Act lends credence to this view
because it clearly contemplates that an aesthetic design
could have
features that are solely necessitated by the function which the
article is intended to perform. It could be argued
that a design
that has many features but only one feature is a feature that appeals
to and is judged solely by the eye, that design
would not fall within
the definition of an aesthetic design because the definition of an
aesthetic design refers to “features”
that appeal to and
are judged solely by the eye. If the Legislature had intended that a
design with many features could qualify
as an aesthetic design even
if it had only one feature that appeals to and is judged solely by
the eye, it would have formulated
the definition of “aesthetic
design” in such a way as to say that such a design must have a
feature that appeals to
and is judged solely by the eye. The fact
that it did not formulate the definition in this way and in fact
formulated it in a
way that refers to “features” suggests
that the intention was that an aesthetic design should have two or
more features
which appeal to and are judged solely by the eye.
Accordingly, if a design has only two features and both meet this
requirement,
it is an aesthetic design. In such a case one can say
that all the features of that design are features that meet this
requirement.
If, however, a design has only two features and one
feature meets this requirement but the other does not, that design
does not
fall within the definition of an aesthetic design and is,
therefore, not an aesthetic design.
[9] It seems from the definition of a
functional design that, in a case where the design is applied to an
article for any two or
more of the purposes referred to in the
definition and is applied to the article by any means, the decisive
question in determining
whether or not the design is a functional
design will be whether or not such design has “features which
are necessitated
by the function which the article to which the
design is applied, is to perform. . . .” It is to be noted that
the definition
of “functional design” does not require
that such a design should have features that are necessitated
solely
by the function which the article is to perform. This means that, if
the features of a design which meets the other requirements
of the
definition of “functional design” are necessitated by not
only the function which the article to which the design
is applied
performs but also by something else, the fact that the features of
that design are also necessitated by something else
in addition to
being necessitated by the function performed by the article would not
take such design outside the definition of
“functional design”.
Here, too, if only one feature of a design meets this requirement,
the design would not be a
functional design. This would be the case
irrespective of whether the design has only one feature or whether it
has many features.
However, as in the case of an aesthetic design,
if a design has many features and only two of its features meet the
requirements,
the design would fall within the definition of a
functional design and would be a functional design. Obviously, if a
design has
only two features and both meet this requirement, the
design will be a functional design. Once again this is if the design
meets
the other requirements of the definition of “functional
design”. A comparison of the definitions of an “aesthetic

design” and a “functional design” reveals the
following two differences between the two designs:
while an aesthetic design may be applied
to an article for the ornamentation of the article, a functional
design may not be applied
to an article for the ornamentation
thereof.
while an aesthetic design is required to
have “features which appeal to and are judged solely by the
eye irrespective of
the aesthetic quality thereof”, a
functional design is required to have features which are
necessitated by the function
which the article to which the design
is applied, is to perform.
[10] Sec 6(1) provides for the appointment
of the Registrar of designs by the Minister of Trade and Industry.
Subject to the directions
of the Minister, the registrar of designs
has the chief control of the designs office. Sec 7(1) of the Act
creates a register
of designs that must be kept at the designs
office. The purpose of the register is to keep a record of designs
which are registered
in terms of the Act as well as information about
such designs and their proprietors or licencees. Sec 7(1) sets out
the information
to be entered into the register. In terms of sec
7(5) the register consists of a Part A and a Part F. Part A is for
aesthetic
designs and Part F is for functional designs.
[11] Sec 14 of the Act governs applications
for the registration of designs. Sec 14(1) reads thus:
“
14.
Applications for registration –
The proprietor of a design which
in the case of an aesthetic design is
–
new; and
(ii) original,
in the case of a functional design, is
–
new; and
(ii) not commonplace in the art in
question,
may, in the prescribed manner and on
payment of the prescribed fee,
apply for the registration of such
design
.”
Sec 14(2) seeks to facilitate the
determination of novelty of a design. It provides as follows:
“
(2) 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 immediately
before the date of application for
registration thereof or the release date thereof, whichever is the
earlier: provided that in
the case of the release date thereof being
the earlier, the design shall not be deemed to be new if an
application for registration
of such design has not been lodged –
in the case of an integrated circuit
topography, a mask work or a series of mask works, within two years;
or
in the case of any other design, within
six months, of such release date”.
Sec 14(3) governs what makes up the state
of the art. This provision seeks to clarify the provision of sec
14(1), particularly
the term “the state of the art”
therein. Sec 14(3) provides:
“(3) The
state of the art shall comprise –
all matter which has been made
available to the public (whether in the Republic or elsewhere) by
written description, by use or
in any other way; and
all matter contained in an application
–
for the registration of a design which
has subsequently been registered in the Republic in accordance with
the provisions of section
44, of which the date of application in
the Republic or convention country, as the case may be, is earlier
than the date of application
or the release date contemplated in
subsection (2)
.”
The provision of sec 14(5) is
important in the present matter. It reads as follows
“(5)
No –
feature of an article in so far as it
is necessitated solely by the function which the article is intended
to perform; or
method or principle of construction,
shall afford the registered proprietor
of an aesthetic design any rights in terms of this Act, in respect
of such feature, method
or principle.
”
[12] The provision of sec 14(5) (b) is of
no relevance in this matter. However, the provision of sec 14(5) (a)
is relevant because
Counsel for the respondent went to great lengths
to try and show that a number of features, if not all the features,
of the registered
design are functional and not aesthetic. This
raises the question of what the effect of sec 14(5) (a) is. The
effect of sec 14(5)
(a) is not that the presence of functional
features in a design that is registered as an aesthetic design
deprives the proprietor
of such design of the protection which the
registration of his design confers upon him in terms of sec 20 of the
Act. In fact
sec 14(5) (a) does not affect in any way any feature
other than a feature that is “necessitated
solely
by the function which the article is intended to perform”.
Accordingly, if a feature does not appeal to and is not judged
solely
by the eye as is contemplated by the definition of “aesthetic
design” in sec 1 of the Act and is functional
but is not
necessitated
solely
by the function which the article is intended to perform, it is not
affected by sec 14(5)(a). Accordingly, the effect of sec 14(5)
(a)
is that a feature of an aesthetic design that is “necessitated
solely
by the function which the article is intended to perform”
cannot be relied upon to protect the proprietor of such aesthetic

design. Of course, the onus to prove that a feature of a design
registered as an aesthetic design is “necessitated
solely
by the function which the article is intended to perform” would
be on the party that makes such an allegation. Accordingly,
where a
party has failed to show that a particular feature is necessitated
solely
by the function which the article is intended to perform, the feature
must be considered as a feature upon which the proprietor
can rely
for protection or to enforce his right provided for in sec 20 of the
Act.
[13] Sec 15 governs the registration of
designs. Sec 15(1) enjoins the registrar of designs to “examine
in the prescribed
manner” any application for the registration
of a design and, if it complies with the requirements of the Act,
register the
design in Part A of the register, if it is an aesthetic
design or in Part F of the register if it is a functional design.
Sec
15(2) provides that the registration of a design shall be with
effect from the date of application for registration. Sec 15(3)

provides that one and the same design may be registered in both Part
A and Part F of the register. Sec 15(4) provides for the
possible
registration of a design in more than one class. It also provides
that in the event of doubt as to the class in which
a design should
be registered, it is the registrar of designs who must determine such
issue.
[14] It is important to emphasise that sec
15(1) lays down three requirements that must be met in order for the
registrar to register
a design. The one is that the registrar “shall
examine” the application. The second one is that the
examination of
the application must be “in the prescribed
manner”. The third is that the application must comply with
the requirements
of the Act. If the application has not been
examined by the registrar, then one of the requirements for
registration has not been
complied with. If the registrar has
examined it but has not examined it “in the prescribed manner”,
then the latter
requirement for registration has not been satisfied.
The phrase “in the prescribed manner” in sec 15(1) means
in the
manner prescribed by the regulations promulgated under the
Act. This is based on the definition of the word “prescribed”

in sec 1 of the Act. The definition of the word “prescribed”
is “prescribed by regulation”. To establish
the
prescribed manner in which the registrar is required to examine an
application for registration, it is necessary to go to the
provisions
of the relevant regulations. The relevant regulation is reg 26
because it is that regulation that deals with the examination
of an
application for registration of a design by the registrar.
[15] The provisions of reg. 26(1) and (2)
read as follows:
“
26. (1) An application for the
registration of a design shall be examined by the registrar to
ensure that the documents lodged
are legible and capable of
reproduction and comply with prescribed requirements as to form, and
that the design is classified and
if in his opinion there is no
objection to the registration of the design, and subject to sub
regulation (2), he shall register
it.
(2) If the applicant has lodged a
request on Form D4 that examination of the design be delayed to a
date not later than the date
by which the application has to be
finalized in terms of regulation 32, the registrar shall, if the
requirements as set out in
sub-regulation (1) have been complied with
and in his opinion there is no objection to the registration of the
design, register
the design on the date to which registration has
been delayed.
”
In the light of the provisions of reg.
26(1) and (2) and of the rest of regulation 26 read with regulation
32, it can be said that
the manner in which the registrar is required
to examine an application for the registration of a design in terms
of sec 15(1)
of the Act is the manner prescribed by reg. 26 in
general and by reg. 26(1) and (2) in particular.
[16] The third requirement for the
registration of a design as laid down in sec 15(1) is that the
application must “comply
with the requirements of this Act”.
Those requirements comprise the requirements of the Act as well as
the requirements
laid down in the regulations promulgated under the
Act. This is because the phrase “this Act” is defined in
sec 1
of the Act as including the regulations. It is important to
point out that the requirement that “it complies with the
requirements
of this Act” in sec 15(1) does not refer to the
design in respect of which there is an application for registration.
The
word “it” in the phrase “if it complies with
the requirements of this Act” is a reference to the application

for registration of the design and not the design itself.
Accordingly, the requirements of “this Act” that one must

look for to see whether the requirements for registration of the
design have been met are the requirements of “this Act”

for an application for registration of a design sought to be
registered. The only requirements that the Act seems to prescribe
for
an application for the registration of a design are that the
application should be made “in the prescribed manner”
and
“on payment of the prescribed fee” (Sec 14(1) (b)). The
requirements of “new” and “original”
do not
relate to the application but they relate to an aesthetic design that
is sought to be registered. The “prescribed
manner” in
which sec 14(1) requires an application for registration to be made
is to be found in the provisions of regulations
13 to 23 which
prescribe the manner in which an application for registration of a
design must be made. I do not propose to quote
those provisions or
to discuss them herein. I only state that the “prescribed
manner” in which an application for
the registration of a
design is to be made is to be found in sec 14(1) of the Act and in
regulations 12 to 23.
[17] Sec 20 is one of the most important
provisions of the Act. It is this provision which spells out the
right which the registration
of a design confers upon the registered
proprietor thereof. Sec 20(1) reads as follows:
“
20.
Effect of registration of design
The effect of registration of a design
shall be to grant to the registered proprietor in the Republic,
subject to the provisions
of this Act, for the duration of the
registration the right to exclude other persons from the making,
importing, using or disposing
of any article included in the class
in which the design is registered and embodying the registered
design or a design not substantially
different from the registered
design, so that he shall have and enjoy the whole profit and
advantage accruing by reason of the
registration.”
What emerges from a reading of the
provision of sec 20(1) is that the right which the proprietor of a
registered design acquires
upon the registration of his design under
the Act is the exclusive right to make, import, use or dispose of any
article included
in the class in which his design is registered which
embodies his registered design or a design not substantially
different from
the registered design so that he shall have and enjoy
the whole profit and advantage accruing by reason of the
registration. Put
differently, for the duration of the registration
of his design, the proprietor of a registered design has the right to
exclude
everyone else from making, importing, using or disposing of
any article that is in the same class as the registered design that

embodies his registered design or a design that is not substantially
different from the registered design so that he has and enjoys
the
whole profit and advantage accruing by reason of the registration.
[18] Sec 31 of the Act governs the grounds
for the revocation of the registration of a registered design. Sec
31 reads as follows:
“
31. Grounds for application for
revocation of registration of design. - (1) any person may at any
time apply to the court in the
prescribed manner for the revocation
of the registration of a design on the following grounds, namely -
that
the application for the registration of the design was not made by a
person entitled thereto under section 14;
that the registration of the design is
in fraud of the rights of the applicant or of any person under or
through whom he claims;
that the design in question is not
registrable under section 14;
that the application for registration
of the design contains a false statement or representation which is
material and which
the registered proprietor knew was false at the
time when the statement or representation was made;
that the application for the
registration of the design should have been refused in terms of
section 16.
”
Sec 31(1) (a) authorises the revocation of
the registration of a design on the ground that the application for
the registration
of the design was not made by a person entitled to
make the application under sec 14. Under section 14 the person who
is entitled
to apply for the registration of a design is the
proprietor of the design. I leave out sec 31(1) (b) and (d).
[19] Under sec 31(1) (c) a registered
design may be revoked on the ground that the design in question is
not registrable under sec
14. Under section 14 an aesthetic design
is not registrable if:
(a) it is not new and
(b) original;
(c) the application for registration of the
design is not made by the
proprietor thereof;
(d) the application for registration of the
design is not made “in the prescribed manner”;
(e) the prescribed fee has not been paid.
A functional design is not registrable
under sec 14 if:
(a) it is not new;
(b) it is commonplace in the art
in question;
(c) the application is not made
by the proprietor of the design;
(d) the application was not made
“in the prescribed manner”;
(e) the prescribed
fee was not paid.
Sec 31(1) (e) provides for the revocation
of the registration of a design if the application for its
registration should have been
refused under sec 16 of the Act. Sec
16 reads as follows:
“
16 Refusal of application –
if it appears to the registrar that an application was not made in
the prescribed manner, he shall
refuse the application.
”
I have earlier in this judgment pointed out
that the provisions which reveal the prescribed manner in which an
application for
the registration of a design is required to be made
are to be found in sec 14 and regulations 12 to 23.
[20] Sec 35 deals with infringement
proceedings. Subsection (1) grants the proprietor of a registered
design the right to institute
infringement proceedings. Subsection
(2) prescribes the giving of prior notice of infringement proceedings
before they can be
instituted. Subsection (3) deals with various
types of reliefs to which a plaintiff in infringement proceedings is
entitled.
Sec 35(5) is relevant in the present matter. It reads as
follows:
“
In any proceedings for
infringement the defendant may counterclaim for the revocation of the
registration of the design and, by
way of defence, rely upon any
ground on which the registration may be revoked.
”
Sec 35(5) is the section of the Act that
contains some of the defences upon which a defendant or respondent
may resist an infringement
claim.
Against the background of the above
overview of some of the important provisions of the Act, it is now
appropriate to turn to the
present case.
Features of the applicant’s
registered design
[21] The applicant states that:
the registered design is in respect of a
bottle carrier i.e. a crate;
the registered design is utilized for
storage in a stacking arrangement, transportation and delivery of
plastic soft drink bottles
of 500ml, 1litre and 2 litre variety;
the bottles referred to in (b) above are
usually manufactured using polysthylene terephthalate in a
blow-moulding process;
the crate of the registered design has a
base from which four peripherally located walls (two side walls and
two end walls)
extend vertically upwardly, thereby, defining a
cavity within the four vertical walls.
six bottle-receiving sockets are defined
within the cavity that is within the form vertical walls and also
extend in a vertically
upward fashion.
the six bottle-receiving sockets are
arranged in a 2X 3 configuration and each receives the base of a
soft drink bottle.
on the underside of the bottle receiving
socket are closure-or cap-receiving sockets for receiving the
closures of lower-tier
bottles when one crate is stacked on top of
another.
each closure-receiving socket is located
within a flared mouth located on a substantially planar
base-sliding surface which
is located on the base of the crate; the
flared mouth includes a number of circumferentially spaced guide
ribs that extend
in a radially outwardly configuration.
the closure-receiving socket comprises a
cylindrical wall defining a cylindrical cavity for receiving and
accommodating the
closure of a bottle which is seated in the crate
below; at the upper end of the cylindrical cavity, a stopper flange
is located
so that the top of the closure of the bottle, seated in
the crate below, abuts the stopper flange of the crate in question

when the bottle’s closure is inserted into the cylindrical
cavity.
the crate further includes four corner
posts to which Swanepoel refers as “the primary posts”
each of which extends
vertically upwardly from each corner of the
crate and is dimensioned to be received in a complimentarily shaped
receiving cavity
of a crate stacked on top of it; Swanepoel say
that each of the primary posts “sports” a step-like
bearing formation
on its upper free end so that the crate stacked
on top of it rests in part on the step of the bearing formation.
adjacent to each primary post are
secondary posts which are located on, and extend above, peripheral
walls of the crate; like
the primary posts, the secondary posts
also have a step-like bearing formation that functions in much the
same manner as the
bearing formations found on the primary posts
when one crate is stacked on top of another.
tertiary support posts are located
within the base of the crate and extend upwardly from within the
cavity.
an important feature of the tertiary
support posts is the existence of a set of non-rotate flags on each
of the tertiary support
posts; these non-rotate flags are in the
form of four flag steps axially defined in the circumference of
each of the tertiary
support posts; the non-rotate flags are
located approximately half-way up the tertiary support posts; each
of the non-rotate
flags has a flag rib that is located proximate to
the flag step and extends radially from the tertiary support posts
into the
bottle-receiving socket; the flag steps and flag ribs
engage a lower end of an upright bottle seated in the crate.
furthermore, each of the primary and
secondary support posts has an elongate rib running substantially
along the length of each
of these posts that extends radially
inwardly from each post into the bottle receiving socket.
the bottle-receiving sockets are in part
defined by the wall portion as well as by the primary, secondary
and tertiary support
posts.
the
prominent features of the crate covered by the registered design
are the base sliding surface found on the base of the crate,
the
flared-mouth, the cylindrical closure-receiving socket combination,
the non-rotate flags located on the tertiary support
post and the
elongate
friction ribs
on each of the primary and secondary support posts.
[22] The applicant also deals in the
founding affidavit with the advantages of the registered design. The
advantages posed by
the registered design having the combination of
features in a crate as aforementioned include the ability to easily
stack and disengage
crates stacked on top of each other when both of
the crates contain bottles. This is achieved using the planar
base-sliding surface
as a gliding surface that directs closures of
bottles contained in a lower crate towards the flared mouth and
closure-receiving
sockets in the base. The crate of the registered
design also has a very stable stacking configuration and furthermore
prevents
bottles from rotating in the bottle receiving socket while
in transit. The applicant points out that this last-mentioned
advantage
is of particular importance in that rotation of the bottle
results in scuff-marks on the bottle and/or any labels associated
therewith;
the result is a damaged bottle which may not be in a
sellable condition.
[23] In its answering affidavit the
respondent devotes a substantial part of the affidavit to an attempt
to show that either all
or at least most of the features of the
applicant’s registered design are not aesthetic features but
are functional features
or are features that are necessitated solely
by the function intended to be performed by the applicant’s
crate. The respondent
dealt with the features of the applicant’s
registered design for this purpose from par 40.1.1 to par 40.10.2 of
the answering
affidavit. The applicant’s reply to the
averments by the respondent in paragraphs 40.1.1 to par 40.10.2 is to
be found in
paragraphs 9 to 13 of the applicant’s replying
affidavit. I refer below to the respondent’s averments
concerning the
alleged functionality of the features of the
applicant’s crate and the applicant’s replies thereto in
its replying
affidavit.
[23.1.1] The first feature of the
registered design that the applicant highlighted which the respondent
contends is functional is
that the crate of the registered design has
a base from which four peripherally located walls extend vertically
upwardly, thereby
defining a cavity within the four vertical walls.
[23.1.2] With regard to this feature, the
respondent says that it hardly needs to be stated that, “if a
bottle crate, by definition
a square container divided into sections
for holding bottles order for transporting goods, is to perform its
function, it must
by definition also have a base and four walls
extending vertically upwardly and defining a cavity within them.”
(See par
40.1.2 of the respondent’s answering affidavit).
[23.1.3] In reply to this the applicant
states in par 12.1 of the replying affidavit that it is incorrect to
contend that the walls,
base and sockets of the crate need to look
the way they do to perform the function which they do i.e. to hold
bottles for transportation.
The applicant points out that this is
clearly illustrated by the fact that the walls, sockets and bases of
the prior art crates
pictured in annexure P2 (the 1997 Megapak
crate), P5 (the 1996 Megapak crate), P16 (the 1986 Megapak crate) and
P18 (the 1996 Megapak
crate) of Mr Naidoo’s answering affidavit
look different to one another and to the registered design, despite
the fact that
they were or are all used to hold bottles during
transportation.
[23.2.1] The applicant also highlights that
the crate of the registered design has six bottle-receiving sockets
that are defined
within the cavity and also extend in a vertically
upward fashion. The applicant states that these bottle-receiving
sockets are
arranged in a 2x3 configuration and each receive the base
of a soft-drink bottle. (See par 5.2 of the founding affidavit).
[23.2.2] The respondent deals with this
by saying that a socket is by definition a hollow into which
something fits, in this case
a bottle–receiving socket. The
respondent goes on to say that the socket is clearly intended to
receive, to hold and to stabilize
a bottle within the crate.
Therefore, says the respondent, if a socket is to perform the
function of a bottle-base receiving socket,
it will evidently
comprise a “hollow” with vertically upwards extending
walls to receive and to hold a bottle base.
Moreover, says the
respondent, the mere fact that the six bottle-receiving sockets are
arranged in a 2x3 configuration is irrelevant
and is, in any event, a
feature found in all crates destined as carriers for 2 litre bottles.
The respondent then concludes by
contending that the walls, base and
sockets of the crate are therefore clearly dictated by the function
that the crate is to serve
and are not, and were not intended to be,
aesthetic (see paras 40.1.1 to 40.1.6 of the answering affidavit).
[23.2.3] The applicant’s reply to all
this is the one in the second part of par 6.2.1 above which is to be
found in paragraphs
9, 10, 11, 12 and 12.1 of its replying affidavit.
In par 12 of its replying affidavit the applicant says that the
walls, base
and sockets of its crate do not need to look the way they
do in order to perform the function which they perform i.e to hold
bottles
for transportation. The applicant says that this is
illustrated by the fact that the walls, base and sockets of the prior
art
pictured in annexurees P2 (the 1997 Megapak crate), P5 (the 1996
Meagpak crate), P16 (the 1986 Megapak crate) of the respondent’s

answering affidavit look different from one another and from the
registered design despite the fact that they were or are all used
to
hold bottles during transportation.
[23.3.1] In par 5.3 of the applicant’s
founding affidavit the feature that the applicant highlights is that
on the underside
of the bottle receiving socket are closure –or
cap receiving sockets for receiving the closures of lower-tier
bottles, when
one crate is stacked on top of another. In par 5.4 of
the founding affidavit the applicant points out that each
enclosure-receiving
socket is located within a flared mouth located
on a substantially planar base sliding surface, which is located on
the base of
the crate. The flared mouth indicates a number of
circumferentially-spaced guide ribs that extend in a radially
outwardly configuration.
In par 5.5 of the founding affidavit the
applicant points out that the closure-receiving socket comprises a
cylindrical wall defining
a cylindrical cavity for receiving and
accommodating the closure of a bottle which is seated in the crate
below. At the upper
end of the cylindrical cavity, a stopper flange
is located so that the top of the closure of the bottle (seated in
the crate below)
abuts the stopper flange of the crate in question
when the bottle’s closure is inserted into the cyndrical
cavity.
[23.3.2] The respondent’s response to
the applicant’s allegations in par 5.2 to 5.5 is to be found in
paras 40.2.1 to
40.2.4 of the respondent’s answering affidavit.
In par 40.2.1 the respondent repeats what the applicant claims in
this regard.
In par 40.2.2 the respondent points out that a socket
is by definition a hollow into which something fits. In par 40.2.3
the
respondent states that in the case of a bottle cap-end receiving
socket, the socket is clearly intended to receive, to hold and
to
stabilize the bottle cap-end. The respondent goes further and says
that, therefore, “if a socket underside a bottle-base
receiving
socket in a crate is to perform the function of a bottle cap-end
receiving socket when the crates are stacked, it will
inevitably
comprise a “hollow” with a cylindrical wall defining a
cylindrical cavity to receive and to hold the bottle
cap-end.”
The respondent concludes by saying that “this feature is
therefore also clearly dictated by the function
that the crate is to
serve and is not, and was not intended to be aesthetic”.
[23.3.3] In par 12.2 of the replying
affidavit the applicant replies to par 40.2 of the respondent’s
answering affidavit.
The applicant states that it is incorrect to
say that the bottle-top receiving socket needs to look the way it
does to receive
a bottle top when the crates are stacked. It
continues and points out that, indeed, each of the crates shown in
annexures P2 (the
1997 Megapak crate), P5 (the 1996 Megapk crates),
P8 (the 1991 Swaziland Bottling Co crate), P16 (the 1986 Megapak
crate) and P18
(the 1996 Megapak crate) would have received the
bottle-top of a bottle housed in a crate below when stacked, yet all
of them look
different to one another and to the registered design.
[23.4.1] In par 5.6 of the founding
affidavit the applicant points out that the crate further includes
four corner posts to which
the applicant refers as “the primary
posts”. The applicant states that each primary post extends
vertically upwardly
from each corner of the crate and is dimensioned
to be received in a “complimentarily shaped” receiving
cavity of a
crate stacked on top of it. The applicant states that
each of the primary posts sports a step-like bearing formation on its
upper
free end so that the crate stacked on top of it rests in part
on the step of the bearing formation.
[23.4.2] In par 40.5.1 of the answering
affidavit the respondent responds to this by pointing out that a
crate corner-end post,
comprising a sturdy upright member, is nothing
new and it serves to provide structural support stability and
strength, particularly
where crates are destined to be stacked. The
respondent says in par 40.5.2 that these features were not intended
to be, and are
not, aesthetic and are features that are dictated by
the function that they are intended to serve as pointed out by the
applicant
itself in par 5.7 of the founding affidavit. The
respondent also points out that the fact that the primary posts have
a step-like
bearing formation on its upper free end so that the crate
stacked on top of it rests in part on the step of the bearing
formation
does not mean that this is a feature that was intended to
be aesthetic. The respondent says that this feature is dictated by
the
function that it is intended to serve.
[23.4.3] In par 12.5 of its replying
affidavit the applicant states that, if the court has regard only to
annexure P1, it is clear
that one of the Megapak crates of the prior
art crates – the applicant says it is not clear whether the
crate pictured in
annexure P1 is the 1986, 1996 or the 1997 Megapk
crate – “stacks easily with the applicant’s crate
“and
the Chespak crate and that all of these crates have
support posts. The deponent to the applicant’s replying
affidavit confirms
that each of the 1986, 1996 and 1997 Megapak
crates would stack the crate of the registered design as an ancillary
“but universal
characteristic of all similar-type crates
supplied to ABI and/or the Coca Cola company.” The applicant
points out that for
a reason that the respondent has chosen not to
explain, it chose to make its support posts look the same as the
applicant’s
crate rather than posts of the prior art crate.
[23.5.1] In par 5.7 of the founding
affidavit the applicant states that adjacent to each of the primary
posts are secondary posts
which are located on and extend above the
peripheral walls of the crate. The applicant says that, as with the
primary posts, the
secondary posts have a step-like bearing formation
that functions in much the same manner as the bearing formations
found on the
primary posts when one crate is stacked on top of
another.
[23.5.2] The respondent’s reply to
this is to be found in paras 40.5.1 and 40.5.2 as set out above.
(See par 6.4.2 above).
The applicant’s reply to this is to be
found in par 12.5 of the replying affidavit. There the applicant
says that it is
incorrect for the respondent to contend as it does in
par 40.5 and 40.6 of the answering affidavit that the posts on the
crate
look the way they do because they function as “support”
posts and are destined to be stacked. The applicant then points
out
that, if the court has regard only to annexure P1, it is clear that
one of the Megapak crates of the prior art crates stacks
easily with
the applicant’s crate (which is an embodiment of the registered
design) and the Chespak crate and that all of
the 1986, 1996 and 1997
Megapak crates will stack the crate of the registered design as an
ancillary. The applicant points out
that for reasons which it has not
explained, the respondent chose to make the support posts look the
same as the applicant’s
crate rather than the posts of the
prior art crates.
[23.6.1] In par 5.8 of the founding
affidavit the applicant says that tertiary support posts are located
within the base of the
crate and extend upwardly from within the
cavity. The applicant says that an important feature of the tertiary
support posts,
which is also one of the important features of the
design registration itself, is the existence of a set of non-rotate
flags on
each of the tertiary support posts. The applicant says that
these non rotate flags are in the form of four flag steps axially
defined in the circumference of each of the tertiary support posts.
It is said on behalf of the applicant that the non rotate flags
are
located approximately half-way up the tertiary support posts. The
applicant states that each of the non-rotate flags has a
flag rib
that is located proximate to the flag step and extends radially from
the tertiary support posts into the bottle-receiving
socket. The
applicant says that the flag steps and flag ribs engage a lower end
of an upright bottle seated in the crate.
[23.6.2] In par 40.6 of its answering
affidavit, the respondent says that its comments in par 38.5 equally
apply to the secondary
and tertiary support posts described in paras
5.7 and 5.8 of the applicant’s founding affidavit. However,
there is no par
38.5 in the respondent’s answering affidavit.
This makes it difficult to locate the respondent’s comments
that it
intends to rely upon in response to par 5.8 of the founding
affidavit. However, in par 40.7.1 to 40.7.3 the respondent includes

par 5.8 as one of the paragraphs in the founding affidavit to which
paras 40.7.1 to 40.7.3 are a response. In par 40.7.2 of the

answering affidavit the respondent states that the “purely
functional” nature of the features described in par 5.8
of the
applicant’s founding affidavit becomes evident when regard is
had to the applicant’s statement in par 5.12 that
these
features serve to engage bottles and to prevent them from rotating in
the bottle receiving socket while in transit. The
respondent says
that the features described in par 5.8 of the founding affidavit are
clearly dictated by their function and are
not and were not intended
to be aesthetic. In par 12.6 of its replying affidavit the applicant
points out that it is incorrect
for the respondent to state, as it
does in par 40.7 of the answering affidavit, that the non-rotate
flags on the tertiary posts
look the way they do in order to engage
the bottle and prevent it from rotating. The applicant says that the
contention by the
respondent is fallacious. In support thereof the
applicant states that there are “innumerable ways of preventing
a bottle
from rotating in a crate such as that of the registered
design and yet the respondent chose to imitate the pattern and shape
of
the applicant’s design.” Ironically, adds the
applicant, the respondent claims that its flags (which the respondent

calls ribs) do not perform the function performed by the registered
design’s flags making it all the more implausible that
the
respondent’s intent was anything other than to imitate the
registered design.
[23.6.3] In par 36 of the replying
affidavit the applicant responds to paras 37 to 40 of the
respondent’s answering affidavit.
The respondent refers to the
response it had given earlier which is to be found in par 12.5 of the
replying affidavit. The applicant
states that it is incorrect to
suggest, as it says the respondent suggests, that the posts on the
crate look the way they do because
they function as “support”
posts and are destined to be stacked. The applicant says that, if
the court only has regard
to annexure P1, it is clear that one of the
Megapak crates of the prior art crates stacks easily with the
applicant’s crate
and the Chespak crate and that all of these
crates have support posts. The deponent to the applicant’s
replying affidavit
states that he can confirm that each one of the
1986, 1996 and 1997 Megapak crates “will stack the crate of the
registered
design as an ancillary but universal characteristic of all
similar-type crates supplied to ABI and/or the Coca Cola company.”

The respondent also points out that, for a reason that was not
explained, the respondent chose to make its support posts look
the
same as the applicant’s crate rather than the posts of the
prior art.
[23.7.1] In par 5.9 of its founding
affidavit the applicant states that each of the primary and secondary
support posts has an elongate
rib running substantially along the
length of each of these posts that extends radially inwardly from
each post into the bottle
receiving socket. In par 5.10 of the
founding affidavit the applicant says that the bottle receiving
sockets are, therefore, in
part defined by the wall portion, as well
as by the primary, secondary and tertiary support posts.
[23.7.2] In par 40.8.1 and 40.8.2 of its
answering affidavit the respondent points out, with regard to the
ribs referred to by the
applicant, that ribs are nothing new and are
well-known as support and strengthening elements. The respondent
then says that in
this case the ribs are not and were not intended to
be aesthetic. The respondent says that they were intended to support
and strengthen.
The respondent also points out that they also serve
a further function that becomes evident when regard is had to the
applicant’s
statement in par 5.12 of the founding affidavit
that they serve to engage the bottles and to prevent them from
rotating in the
bottle receiving socket while in transit.
[23.7.3] In par 12.7 of the replying
affidavit the applicant points out that it is incorrect for the
respondent to suggest that
the elongate ribs on the support posts
have to look the way they do to perform the function that they do
(also to prevent rotation
of the bottles). The applicant says that
this is not so as illustrated by the fact that the ribs in annexure
P16 to P20 (the 1986
Megapak crate, the 1991 Swaziland Bottling Co
crate, the 1996 Megapak crate, the Mega Plastics crate and the 1997
BKG crate respectively)
look different to the elongate ribs of the
registered design. The applicant further states that there is no
need for the crate
to include ribs to perform this function at all.
It says that there are many ways of preventing a bottle rotating in a
crate of
which the non-rotate flags referred to earlier are but one
example.
[23.8.1] In par 5.11 of the founding
affidavit the applicant points out that the prominent features of the
crate covered by the
registered design are those of the base-sliding
surface found on the base of the crate, the flared-mouth and
cylindrical closure-receiving
socket combination, and the non-rotate
flags located on the tertiary support post. In addition, says the
applicant, elongate friction
ribs on each of the primary and
secondary support posts are another prominent feature of the
registered design.
[23.8.2] The respondent’s response to
par 5.11 of the founding affidavit is to be found in both par 40.9
and par 40.10 of
the answering affidavit. With regard to the
applicant referring in par 5.11 to a “base-sliding surface”
found in the
base of the crate, the respondent says that this
underscores the purely functional purpose of that “base-sliding
surface”
feature when, in par 5.12 of the founding affidavit,
the applicant refers to the ease of seeking and disengaging achieved
by means
of a planar base-sliding surface that serves as a “gliding
surface that directs closures of bottles contained in a lower crate

towards the flared mouth and closure receiving sockets in the base.”
The respondent points out in par 40.9.3 of its answering
affidavit
that the “base sliding surface” is, therefore, not, and
was not intended to be, aesthetic. The respondent
says that by the
applicant’s own admission it serves a very distinct purpose.
In par 40.10.1 the respondent responds to
paras 5.10, 5.11 and 5.12
of the applicant’s founding affidavit. The respondent points
out that these paragraphs in the
applicant’s founding affidavit
unequivocally claim and state that the purpose of all of the features
listed and described
by the applicant in par 5 were intended to serve
a particular function, namely, collectively to the facilitate
stacking of crates,
disengagement of stacked crates, the prevention
of damage to bottles whilst in transit as a result of dislodgement
and rotation
and to provide stability of stacking. The respondent
says in par 40.10.2 of the answering affidavit that nothing in the
paragraphs
of the founding affidavit referred to claims anything
other than functional purposes and nothing points to any intrinsic
aesthetic
values.
[23.8.3] In par 12.7 of its replying
affidavit the applicant disputes the respondent’s contention
contained in par 40.8 of
the answering affidavit that the elongate
ribs on the support posts have to look the way they do in order to
perform the function
that they perform including the prevention of
the rotation of the bottles. The applicant states that this is not
so as is illustrated
by the fact that the ribs in annexure P16 to P20
(the 1986 Megapak crate, the 1991 Swaziland Bottling Co crate, the
1996 Megapak
crate, the Mega Plastics crate, and the 1997 BKG crate,
respectively) look different to the elongate ribs of the registered
design.
The applicant also points out that there is also no need for
the crate to include ribs to perform this function at all. It
suggests
that there are many ways of preventing a bottle rotating in
a crate of which the non-rotate flags are but one example.
[23.9.1] In par 5.12 of the founding
affidavit the applicant sets out the advantages posed by the
registered design having the combination
of features in a crate as
aforementioned including the ability to easily stack and disengage
crates stacked on top of each other
when both crates contain bottles.
The applicant says that this is achieved using the planar
base-sliding surface as a gliding
surface that directs closures of
bottles contained in a lower crate towards the flared mouth and
closure receiving sockets in the
base. The applicant states that the
crate of the registered design also has a very stable stacking
configuration and furthermore
prevents bottles from rotating in the
bottle receiving socket while in transit. The applicant points out
that the last-mentioned
advantage is of particular importance in that
the rotation of the bottle results in scuff-marks on the bottle
itself and/or any
labels associated therewith. The applicant points
out that the result is a damaged bottle which may not be in a
saleable condition.
[23.9.2] The respondent’s response to
par 5.12 of the founding affidavit is contained in paras 40.7.1,
40.7.2, 40.7.3, 40.9.1,
40.9.2, 40.9.3, 40.10.1, 40.10.2, 41-45 of
the respondent’s answering affidavit. When one reads what the
respondent has
to say in all these paragraphs in the answering
affidavit, it comes down to simply that the respondent says that the
features in
question are not aesthetic, were not intended to be
aesthetic and are purely functional. In par 45 of the answering
affidavit,
the respondent even says that it is advised that it is
established law that, when considering the scope of an aesthetic
design,
design features have to appeal to and be judged solely by the
eye. In this regard the respondent avers that there is nothing in

the applicant’s founding affidavit that “shows anything
visually special, peculiar, distinctive, significant or striking

about the design or any feature of it.” The respondent says
that the applicant fails to say why it sought to register the
design
as an aesthetic design “when it is clearly functional”.
The respondent says that “in the above premises”
the
court should therefore dismiss the application with costs.
[23.9.3] In the replying affidavit the
applicant’s response to paragraphs in the respondent’s
answering affidavit specified
at the beginning of the preceding
paragraph is to be found in par 12.8 and 13 of the applicant’s
replying affidavit. In
par 12.8 of the replying affidavit the
applicant disputes the respondent’s contention contained in par
40.9 of the answering
affidavit that the base has to look the way it
does in order to perform the function of a base-sliding surface. The
applicant
points out that the only requirement to make a base
“sliding” is that it be planar. The applicant adds that
the remaining
features of shape and configuration of the base are
aesthetic features. Finally, the applicant says that, while it is
correct
that the advantages of the crate were identified in par 5.12
of the founding affidavit, it does not mean that the crate as a whole

has to look like the registered design to achieve those advantages.
The applicant repeats its point that there are innumerable
different
designs which could function in the same way and yet the respondent
chose to make its crate “a virtual carbon copy
of the
registered design” and has failed to explain why it chose to do
this.
Determination of the scope of
the registered design
[24] Before the question of novelty and
originality as well as infringement of the registered design can be
considered, it is necessary
to determine the scope of the registered
design. In this regard it is appropriate to begin this process by
recalling the policy
of legislation making provision for the
registration of designs. In this regard counsel for the applicant
referred me to Lord Reid’s
speech in Amp Inc v Utilux (Pty) Ltd
(1972) RPC 103
(HL) at 107 line 40 – 108 line 25. There Lord
Reid said about “the problem” and “apparent policy
of the
legislation” relating to designs in England as at 1972:
“
Those who wish to purchase an
article for use are often influenced in their choice not only by
practical efficiency but by appearance.
Common experience shews that
not all are influenced in the same way. Some look for artistic merit.
Some are attracted by a design
which is strange or bizarre. Many
simply choose the article which catches their eye. Whatever the
reason may be one article with
a particular design may sell better
than one without it, then it is profitable to use the design. And
much thought, time and expense
may have been incurred in finding a
design which will increase sales. Parliament has been concerned to
see that the originator
of a profitable design is not deprived of his
reward by others applying it to their goods.
Although what Lord Reid said in the
passage above about legislation protecting registered designs was
said in respect of English
legislation in the 1970’s, I think
that it reflects sentiments that must, in essence, be true also of
the policy behind legislation
protecting registered designs in this
country as well.
[25] The determination of the scope of a
design registration requires a construction of the definitive
statement and the drawings
(Clipsal Australia (Pty) Ltd v Trust
Electrical Wholesalers
2009 (3) SA 292
(SCA) at par 6. As it was said
in Clipsal, the purpose of a definitive statement is to set out the
features of the design for which
protection is claimed and is used to
interpret the protection afforded by the design protection (see
Clipsal at par 6). In this
case, as was the case in Clipsal as well,
the definitive statement is of the omnibus type. It does not isolate
any feature of the
registered design with the object of claiming
novelty or originality in respect of such feature. This means that
the shape or configuration
of the registered design as a whole has to
be considered for purposes of novelty, originality or infringement
(Clipsal par 7).
[26] In Clipsal the Supreme Court of Appeal
stated that when determining the scope of an aesthetic design
protection important aspects
flow from the definition of an
“aesthetic design”, namely, that design features have to
appeal to and be judged solely
by the eye (par 8). The court then set
out four such aspects as follows:
“
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. 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. 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. 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” (Clipsal, par 8).
Counsel for the applicant submitted that
there were two further principles that must be taken into account in
determining the scope
of the registered design. The one is captured
in Homecraft Steel Industries (Pty) Ltd v SM Hare of Son (Pty) Ltd
and Another
[1984] ZASCA 36
;
1984 (3) SA 681
(A) at 695 A-D. There Corbett JA, as he
then was, said:
“
The state of the art at
the time when the design was registered
and the degree of novelty and
originality achieved by the
registered design is also an
important factor. Russel Clarke
(op cit at 85 ) states:
‘
Thus it may be said
that a registered design which is possessed
of substantial novelty and
originality will have broader reading
given to the monopoly which
it affords than barely novel or original.
In the latter case, where the
novelty is small, the court may refuse
to hold anything to be an
infringement, unless it is almost exactly
like the registered design’.
[27] Corbett JA held that the principles
enunciated in the statements in the passage quoted immediately above
were well-supported
by authorities, were sound and logical and of
equal application to our law (Homecraft at 695 D). The principle
reflected in the
last passage quoted above seems to be reflected in a
passage in Clipsal where, at par 17, the Supreme Court of Appeal said
in part:
“
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. As Burrell suggests,
to consider the definitive statement
without regard to
the prior art would eviscerate
its purpose”.
The second of the two principles which
counsel for the applicant submitted should be added to the principles
is derived from the
provision of see 14 (5) (a) of the Act. That is
that the court must have no regard to features of the article
embodying the registered
design which are necessitated solely by the
function which the article is intended to perform.
[28] In this matter the definitive
statement is of the “omnibus” type because it does not
isolate any particular features
of the applicant’s registered
design with the object of claiming novelty or originality in respect
of such features. In this
case the applicant’s design is
claimed in its entirety. In par 5.11 of its founding affidavit the
applicant referred to certain
features in the registered design which
it described as “prominent features!” This cannot be a
basis for a suggestion
that only those “prominent features”
must be invoked because the whole of the design must be looked at.
Nevertheless,
there can be no doubt that the use of the adjective
“prominent” to describe those features means that those
features
would easily catch one’s eye. Those features are:
the
base sliding surface found on the base of the create;
the
flared mouth and cylindrical closure receiving socket combination;
the
non-rotate flags located on the tertiary support posts, and;
the
elongate friction ribs on each of the primary and secondary support
posts.
As counsel for the applicant submitted, in
determining the scope of a registered design the court must have
regard to the “visual
aspects” of the registered design
that will appeal to the likely customers of the goods in question. I
am of the view that
the features that the applicant described in the
founding affidavit as prominent appeal to the eye and are to be
judged solely
by the eye. That respondent complained that the
applicant did not specify which of the features of the registered
design were intended
to be aesthetic. Although the design must be
looked at as a whole, it seems to me that in describing the features
that the applicant
described as prominent, it succeeded in conveying
that those features would easily catch one’s eye or the eye of
the likely
customer. The shorter Oxford English Dictionary describes
the word “prominent” as inter alia meaning: “standing

out so as to catch the attention, conspicuous, distinguished above
others of the same kind”. Having examined those features
I am
of the opinion that they catch one’s eye. In this case there
can be no doubt that the likely customers are soft drink

manufacturers and retailers. When all is said and done, the design
must be considered as a whole for the purpose of determining
its
validity and its infringement. In this regard I note that in
Clipsal’s case reference had been made to a “dominant

aesthetic feature” of the design (see pr 11 of the Clipsal
judgment).
The contention that the registered
design was not an aesthetic design at the time of application for
registration.
[29] The first point that was argued by
counsel for the respondent was in effect that the applicant’s
design was not an aesthetic
design and that, for that reason, its
registration was invalid because the design was not registrable as an
aesthetic design. In
this regard Counsel for the respondent referred
to the areas in the affidavits in which the respondent had sought to
show that
the features of the applicant’s design were not
aesthetic and were simply functional. He submitted that the onus was
upon
the applicant to show that the design was registrable. There was
quite some debate between the parties before me on the question
of
onus in regard to this point. In the view I take of this matter it is
not necessary to decide the issue of onus. This will be
apparent
later in this judgment. Indeed, on the facts of this case I find it
unnecessary to decide this issue.
[30] In so far as the respondent seeks to
invoke the provisions of sec 14(5) of the Act, I am of the opinion
that it has not shown
that all the features of the applicant’s
bottle carrier are necessitated
solely
by the function which the bottle carrier is intended to perform.
Indeed, it has not even shown that the majority of the features
of
the applicant’s bottle carrier were necessitated
solely
by the function which the bottle carrier was intended to perform. I
do not propose to deal with each feature in this regard but
even in
its own answering affidavit, in respect of some features the
respondent did not even aver that such features were necessitated
solely
by the function which the bottle carrier was intended to perform.
Without having made averments to this effect in respect of such

features, the respondent cannot even begin to argue that such
features were necessitated
solely
by the function which the bottle carrier was intended to perform. A
reading of the respondent’s answering affidavit from
paragraphs
40.1.1 to par 45 will reveal the features to which this applies. It
is important that it be understood that sec 14(5)
only applies to a
feature that is necessitated solely by the function which the article
is intended to perform. The evidence placed
by the applicant before
the Court reveals that on the whole the features which the respondent
sought to contend were functional
did not need to look the way they
do for them or the bottle carrier to perform the function that they
do. In terms of sec 35 (5)
of the Act the defendant in proceedings
for infringement may counterclaim for the revocation of the
registration of the design
and, by the way of defence, may rely upon
any ground on which the registration may be revoked. One of the
grounds upon which a
design may be revoked under sec 31 (1) of the
Act is that the design “is not registrable under sec 14.”
Two of the
requirements for the registration of an aesthetic design
under sec 14 are that it must be new and original. However, in this
matter
the basis upon which Counsel for the respondent contended that
the applicant’s design was not registrable when the
application
for its registration was made, was that the design was
not an aesthetic design. He contended that the features of the
registered
design were all necessitated solely by the function of the
bottle carrier of the applicant.
[31] In reply to the respondent’s
point that features identified by the applicant in its founding
affidavit and upon which
the applicant relies are solely functional
the applicant says in par 10 of its replying affidavit that the
respondent appears to
have misunderstood the distinction between a
functional design (and a functional feature of a design) and an
aesthetic design (and
an aesthetic feature of a design). In this
regard the applicant points out that a functional design is defined
in the Act as one
“..having features which are necessitated by
the function which the article to which the design is applied, is to
perform…”.
The applicant says that in other words “a
functional design is a design which cannot look any other way if it
is to perform
the function that it does”. The applicant submits
that it is, therefore, permissible to protect features of an article
which
perform a function by way of an aesthetic design registration
provided the shape and configuration of those features are not
necessitated
solely by that function. The applicant submits that
there is no legal basis upon which a registered design may be
invalidated
on the ground that it should have been filed as a
functional design. The applicant points out, however, that it is
correct that
functional features of a registered design are to be
ignored in construing the scope of a registered aesthetic design for
the purposes
of determining whether or not it is valid or infringed.
[32] Section 14(5)(a) of the Act provides
that no feature of an article shall provide the proprietor of an
aesthetic design any
rights in terms of the Act if such feature is
necessitated
solely
by the function which the article is intended to perform. I have
carefully considered the averments made by the respondent in

paragraphs 40.1.1 to par 40.10.2 of the answering affidavit as well
as the applicant’s reply to those paragraphs in its replying

affidavit. I have also examined the various features of the
applicant’s crate. In my view the onus is upon the respondent

to show that all or most of the features of the applicant’s
crate were necessitated
solely
by the function which the crate is intended to perform. The onus to
which I refer now is not on whether the applicant’s design
was
registrable or not at the time an application was made for its
registration. I said earlier in this judgment that on the facts
of
this case I found it unnecessary to decide the issue of onus on that
point. The onus to which I now refer relates to a different
point.
That is the onus to show that the features of a design that is
registered as an aesthetic design are necessitated
solely
by the function of the article to which the design is applied. I
think that the onus on that point is on the one who seeks to invoke

sec 14 (5) and, therefore, alleges that a particular feature of a
design is necessitated solely by the function of the article.In
my
view the respondent has not discharged this onus. That being the
case, it cannot be said that most or all of the features of
the
applicant’s crate do not afford the applicant any rights in
terms of the Act in respect of such features. Therefore,
such
features do afford the applicant rights in terms of the Act as part
of the whole crate. In any event it must be recalled
that the
applicant in this case did not seek to rely only on some of the
features of the registered design for its protection but
sought to
rely on the whole design.
[33] Counsel for the applicant submitted in
effect that the respondent’s contention amounted to saying that
it was a requirement
of the Act that a design should be shown to be
an aesthetic design in order for it to be registered and that, if,
after the registration,
it could not be shown to be an aesthetic
design, this would be a ground for the revocation of such design and,
therefore, a ground
of defence as well in infringement proceedings.
Counsel for the applicant submitted in effect that the respondent
misconceived
the legal position in this regard. He submitted that
there was no such requirement in the
Designs Act, 1993
. I agree with
counsel for the applicant in this regard. That this is so is borne
out by the fact that in terms of the Act it
is not only an aesthetic
design that may be registered but that a functional design may also
be registered. The registration of
a design, irrespective of whether
it is an aesthetic or functional design, confers upon the registered
proprietor of the design
the right provided for in section 20 of the
Act. The provision of section 20 makes no distinction between the
registration of
an aesthetic design and the registration of a
functional design. It simply speaks of “the effect of the
registration of
a design…” It says that that effect
“shall be to grant to the registered proprietor in the
Republic…”
the right spelt out therein.
[34] Counsel for the applicant referred to
the 1967 Act (i.e. the precursor to the current Act) and pointed out
that under that
Act provision was made for the cancellation of the
registration of a design on the ground that it was not a design
within the meaning
of that term in section 1 of that Act. The word
“design” in the 1967 Act was defined in such a manner as
to make it
a requirement that its features should “appeal to
and be judged solely by the eye”. That requirement meant that
under
that Act only an aesthetic design was regarded as a design. So
under that Act the registrar of designs could refuse to register
a
“design” if such “design” was not an
aesthetic design because in such a case a “design” that

was not an aesthetic design was not a design as defined in that Act.
Under the current Act, that is not the case. Two types of
designs are
recognised under the current Act, namely, an aesthetic design and a
functional design. In this regard it is significant
to note that sec
15(3) permits the registration of one design in both Part A and in
Part F. It is not the fact that a design is
registered in Part A or
Part F that confers protection upon the registered proprietor of a
registered design. It is the mere act
of registration of the design.
This much is clear from the provision of sec 20 of the Act. That
provision makes no distinction
between a registered aesthetic design
and a registered functional design in specifying that the registered
proprietor of a registered
design shall have the right to exclude
others from making, importing and disposing of an article that
embodies a registered design
or a design not substantially different
from the registered design.
[35] Sec 14 (5) of the Act, which has
been quoted earlier in this judgment, provides that no feature of an
aesthetic design shall
grant the registered proprietor of such design
any rights in terms of the Act if such feature is necessitated
solely
by the function which the article to which the design is applied is
intended to perform. This provision is the shield which an
alleged
infringer can use to protect himself against claims of infringement
of a registered design where such design has features
that are
necessitated solely by the function of the article to which the
design is applied. It is not a defence for the alleged
infringer to
say that the design is not an aesthetic design and should not have
been registered as an aesthetic design but should
have been
registered as a functional design. In my view there is significance
to be attached to the distinction between features
that are
contemplated in the definition of a functional design, on the one
hand, and, on the other, features contemplated in sec
14 (5) of the
Act. In terms of the definition of a “functional design”
in the Act the features of a functional design
are features which are
necessitated by the function which the article (to which the design
is applied) is intended to perform.
The definition of “functional
design” does not require that such features be features that
are “necessitated
solely” by the function of the article
to which the design is applied. Under sec 14 (5) of the Act the
features of a design
which do not grant the registered proprietor any
rights under the Act are not those that are necessitated by the
function of the
article (to which the design is applied) but it is
those features which are “ necessitated solely” by the
function
which the article ( to which the design is applied ) is
intended to perform. It seems to me that the intention of the
Legislature
was that, if an alleged infringer complains that the
features of a design that is registered as an aesthetic design are
not aesthetic,
that would not be a defence to an infringement claim
as such but the alleged infringer may invoke the protection provided
to him
by sec 14 (5) of the Act.
[36] In any event, even if I were wrong
in my construction of the definition of the “functional design”
and the provision
of sec 14 (5) of the Act, I would, nevertheless,
reject the respondent’s contention that the applicant’s
design was
not registrable because it was not aesthetic. In my view
the applicant’s registered design is aesthetic. The registered
design
must be looked at as a whole since the definitive statement
relating to it is of the “ omnibus “ type and this means

that it is the shape and configuration of the design as a whole upon
which the applicant relies for protection. In addition the
applicant
has set out certain features of its design which it has described in
its founding affidavit as “prominent features”
of the
design which in my view implies that such features would easily catch
the beholder’s eye. I have also looked at the
photographs of
the applicant’s registered design, particularly the features
said by the applicant to be the prominent features
and I am of the
opinion that they do catch one’s eye. Indeed, I think that they
would catch the eye of the likely customer.
In the light of all the above I reject as
bad in law the respondent’s defence that the applicant’s
registered design
is invalid because it should not have been
registered as an aesthetic design.
Was the registered design new and
original at the time of the application for registration?
[
37] The
respondent’s counsel also contended that the applicant’s
registered design was not registrable because it was
not new and
original as required by sec 14(1) of the Act and that, therefore, it
cannot be said to have been infringed by the Chespak
crate. Section
35(5) of the Act provides that in any proceedings for infringement
the defendant may counter-claim for the revocation
of the
registration of the design in question and may, by way of defence,
rely upon any ground on which the registration of the
design may be
revoked. In terms of section 31(1) of the Act a design may be
revoked upon any one of a number of grounds listed
in the provision
of that subsection. One of these is that the design in question is
not registrable under section 14 of the Act
(section 31(1)(c)). Two
of the requirements which an aesthetic design must meet in order to
be registered under sec 14 are that
it must be:
new; and
original.
This, therefore, means that a
defendant or a respondent in infringement proceedings may, as its
defence to a claim of infringement,
contend that the aesthetic design
was not new and original at the time of the application for its
registration. It is necessary
in this regard to refer to the
provision of section 14(2) in so far as it is relevant. Section
14(2) reads as follows as far as
it is relevant herein:
“
(2) 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 immediately before
the date of application thereof or the
release date thereof, whichever is the earlier: provided that in the
case of the release
date thereof being the earlier, the design shall
not be deemed to be new if an application for the registration of
such design
has not been lodged -.
in the case of integrated circuit
topography, a mask work
or a series of mask works, within two
years; or
in the case of any other design, within
six months, of
such release date.”
From the provision of section 14(2) one can
say that a design is taken to be new if it is different from or if it
does not form
part of the state of the art immediately before the
date referred to in section 14(2). If it was not different from the
state
of the art or if it was part of the state of the art
immediately before the relevant date, it is not new. If a design is
to be
said not to have been new, it must be shown that the design
formed part of the state of the art at the time when an application

was made for its registration. Section 14(3) sets out what the state
of the art comprises. Of course, as is the case in patent
law,
immaterial variations will not be enough to escape the conclusion
that the design has been anticipated or was part of the
state of the
art.
[38] In dealing with lack of novelty of a
patent as a ground of revocation of the registration of a patent,
Burrell points out that
the general and main principle of novelty is
that, if the claims are compared with the alleged anticipation and
the comparison
reveals that the alleged anticipation and the alleged
invention are substantially identical, then there is no novelty in
the alleged
invention, but if there is a difference which is more
than practically immaterial, then there is novelty (Burrell: Burell’s

South African Patent and Design Law 3
rd
ed, at p 310, par 4.71.2). Burrell goes on to say that the best
method to test for novelty in the case of patents is to take the

integers of a given claim seriatim and to look for their counterparts
in the alleged anticipation. He says that this is in fact
the only
sensible method and one that is invariably adopted by our Courts
(Burrell, at 231). In this case it is important to point
out that
there is no single prior art crate which the respondent has put up
that has all the features present in the applicant’s
design.
What the respondent has done is to put up different prior art crates
and point out that some of the features of the applicant’s

design that the one prior art crate does not have are to be found in
another prior art crate. This is to mosaic a design. In Clipsal
the
court held that it is old law that one is not entitled to mosaic for
purposes of novelty (see Clipsal at par 13). In Clipsal
the High
Court had held that it was entitled to mosaic different pieces of
prior art. The Supreme Court of Appeal held that “
it was old
law that one was not entitled to mosaic for purposes of novelty.”The
Supreme Court of Appeal went on and held:
“A design is not
novel if it forms part of a 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” (Clipsal, par 130). The Supreme
Court of Appeal went on to say:
“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. That is why it is usually said
that an ordinary trade
variant is not sufficient to impart novelty
(Clipsal par. 14).
The respondent was required to put up one
prior art crate that had all the features of the applicant’s
design or if there
were differences, the respondent had to show that
the differences were immaterial. This has not been shown to be the
case. Even
where the respondent alleged features of the applicant’s
design to be ordinary trade variants, it did not in my view put up

sufficient evidence to prove that such features are ordinary trade
variants.
[39] In Sunsmart this court, through
Southwood, J held that “to decide the question of novelty the
enquiry proceeds in two
stages”. He went on and said: “First,
it must be determined whether the occurrence or disclosure (which is
alleged
to anticipate the design) qualifies as an effective
anticipation. Second, (if the occurrence or disclosure qualifies as
an effective
anticipation) it must be determined whether the
anticipation destroys the novelty of the design. In order to carry
out the second
enquiry it is necessary to establish the ambit or
scope of the design registration and the alleged anticipation and to
compare
the two. If the comparison reveals that the alleged
anticipation and registered design are substantially identical there
is no
novelty in the design as registered. If there is a difference
which is more than practically immaterial, there is novelty. This

issue is judged by the eye and the general impression is decisive.
The question is whether the two appearances, each considered
as a
whole, are substantially different or not” (see Burrell
paragraph 9.72.6-9.72.8).
[40] In the Sunsmart case, after
formulating the inquiry as above, the court then said that at least
one of the items forming part
of the state of the art at the time of
the application for the registration of the design involved in that
case was a tear-drop
shape applied to a flag. In this regard it
specified a US patent. The court then said: “This ‘sail-flag’
is
not substantially different from the plaintiff’s design, and
therefore, destroys its novelty. The defendant had accordingly

established a defence to the plaintiff’s claims based on
infringement of its design registration” (Sunsmart par 29).

The determination of whether or not a registered design is new
requires a comparison between the anticipatory material and the

registered design” (Sunsmart at par 7).
[41] Burrel says that lack of originality
as a separate ground of revocation of a design registration is an
innovation of the current
Act (Burrell at par 9.73 and 500). He says
that in the repealed Designs Act 57 of 1967 the requirement of “new
or original”
was treated by the Legislature as a single concept
and ground of revocation. Burrell expresses the view that the word
“original”,
which is not defined in the Act, was probably
intended by the Legislature to have the same meaning as in the
context of copyright
law. (Burrell at par 9.73 at 500). He says
that this means that the requirement that an aesthetic design must
also be original
before it can be registered does not mean that “the
aesthetic design must be in any way unique or inventive but merely
that
it should be the product of the author’s labours and
should not be copied from other sources. An aesthetic design can
still
be original notwithstanding that it has been copied from a
previous work provided sufficient skill and effort have been embodied

in creating the subsequent work” (Burrell at par 9.73 at 500).
[42] In
Clipsal
the court dealt with novelty and
originality. In par 20 the court said in part:
“
The
current Act of 1993 differs 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.
There is no measure against which originality has to be tested.”
The court then went on
to say that the requirements that an aesthetic design must have “some
‘individual characteristic’
‘calculated to attract
the attention of the beholder’ and 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 have nothing to do
with originality. The court continued
and also pointed out that originality can also not be equated with
not being commonplace.
The Supreme Court of Appeal then said:
“
The only other meaning ‘original’
can bear is one that is the same or akin to the meaning in copyright
law, something
that is not far-fetched 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] R.P.C 461
at 482:
The court
must be satisfied that the design for which
protection
is claimed has not simply been copied
(e.g. 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)”.
[43] In par 56.6 of its answering affidavit
the respondent averred that both the applicant’s registered
design crate and the
respondent’s Chespak crate are “mere
slavish reproductions of the Benchmark crate design and whatever
adaptations incorporated
therein are dictated by functional trade
variants and improvements. . .” In par 14 of its replying
affidavit the applicant
stated that the Benchmark crate referred to
by the respondent is referred to in par 56.4 of the answering
affidavit as being a
Megapak design originating from 1998 but points
out that its features are neither explained nor illustrated and that,
therefore,
on this ground the respondent’s attack on the
registered design on this basis should fail.
[44] In par 58.3 of the answering affidavit
the respondent states that the base sliding surface of the
applicant’s crate is
a common trade variant present in the 1986
crate of Megapak. The respondent says that this can be seen in the
photographs no.
P4 and no. P5 of the 1996 Megapak crates (the
photographs of the 1986 and 1996 Megapak crates respectively). In
par 18.1 of its
replying affidavit the applicant points out that
photograph no. P4 shows a base surface which differs materially from
the registered
design in that the shape of the bases of the posts are
semi-circular as opposed to half an antagon. The applicant says that
photograph
no. P5 looks nothing like the base-sliding surface of the
registered design.
[45] The respondent admits that the guide
ribs in the applicant’s registered design are a feature which
is not to be found
in the Megapak 1997 crate which, according to the
respondent, constitutes the prior art which has the most features of
the applicant’s
registered design. The guide ribs are feature
no. 8 in the table provided by the respondent at page 26 of the
answering affidavit.
However, the respondent says that the guide
ribs are a well-known trade variant present even in the 1986 Megapak
crate. In this
regard the respondent refers to photograph no. P7
attached to its answering affidavit. It also refers to photograph
no. P8 which
it says is a 1991 crate by the Swaziland Bottling Co.
In par 18.6 of its replying affidavit, the applicant points out that
the
guide ribs in photograph no. P7 are substantially different from
those of the registered design. The applicant states therein that

the ribs are “proud relative to the base whereas those of the
registered design are angled inwards relative to the base,
creating
an entirely different impression”.
[46] The respondent admits that the
non-rotate flag in the applicant’s registered design (“feature
16 in the respondent’s
table on page 26 of the answering
affidavit) is not to be found in the 1997 Megapak crate. The
respondent also admits that the
non-rotate ribs of the applicant’s
registered design are a feature that is not to be found in the 1997
Megapak crate but
says it is a well-known variant. In support of its
statement that the non-rotate ribs are a well-known trade variant,
the respondent
says in par 58.8 of its answering affidavit that this
can be seen in photograph no. P18 of the 1996 Megapak crate,
photograph no.
P17 of the 1991 crate of the Swaziland Bottling Co.,
photograph no. P18 of the 1996 Megapak crate, photograph no. P19
which is
a glass crate of Mega Plastics and photograph no. P20 which
is a photograph of the 1997 BKG crate. The applicant points out in

par. 18.3 of its replying affidavit that the respondent relies on
photographs no P16 to P20 to support its contention that the
elongate
ribs of the registered design are a common trade variant. The
applicant points out in par 18.3 of its replying affidavit
that only
the ribs
in photograph no. P16
bear any
resemblance to those of
the registered design
and they
are different in that they extend only half-way down the post before
meeting a ledge extending around the circumference
of the post. The
applicant says that the overall impression created is entirely
different.
[47] In par 17 of its replying affidavit
the applicant draws attention to the four features of its registered
design which the respondent
has admitted are not to be found in the
prior art or in the 1997 Megapak crate. The applicant then points
out that those features
(which are features 7, 8, 16 and 17 in the
table on page 26 of the respondent’s answering affidavit)
correlate directly with
the four “prominent” features of
the applicant’s registered design identified in paragraph 11 of
the founding
affidavit. The applicant points out in par 17 of its
replying affidavit that those features are not ordinary trade
variants and
their shapes and configurations are not necessitated
solely by their function. The applicant points out in par 17 of the
replying
affidavit that in fact the respondent concedes in par 58.7
of its answering affidavit that the non-rotate flags are not
“disclosed
in the prior art” at all. The applicant also
points out that it is implicit in par 58.10 of the respondent’s
answering
affidavit that the respondent does not consider this
feature to be an ordinary trade variant. In any event the applicant
points
out in par 16 of its replying affidavit that even if the
meticulous analysis used by the respondent in comparing the
registered
design with prior art were permissible in the
determination of novelty in the light of a prior art document or
article, which it
contends is not permissible, the fact that all but
four features of the registered design were disclosed in the prior
art crate
is not sufficient to invalidate the registered design for
lack of novelty. In fact in par 17 of the replying affidavit the
applicant
points out that those four features missing in the prior
art are the four features the applicant identified in its founding
affidavit
as the prominent features of the registered design. Later
in the replying affidavit (par 36) the deponent to the applicant’s

founding and replying affidavit’s says that, in identifying the
prominent features in his founding affidavit, he did so with
a view
to pointing out their aesthetic appeal.
[48] In conclusion to the question whether
or not the applicant’s registered design formed part of the
prior art and, was,
therefore, not novel at the time that the
application was made for its registration the answer has to be an
emphatic no. The applicant’s
registered design was not part of
the prior part at the time. Accordingly, I conclude that it was new
as required by sec 14 (1)
of the Act. As to the question whether or
not the applicant’s registered design was a copy of an earlier
design, the answer
is also an emphatic no. Accordingly, I conclude
that the applicant’s design was original as required by sec
14(1) of the
Act. That being the case the respondent’s
contention that the applicant’s registered design was not
registrable because
it was neither new nor original falls to be
rejected.
Infringement
[
49]
Section 20(1) provides that the effect of the registration of a
design is to grant the registered proprietor of the registered
design
the right to exclude others from making, importing, using or
disposing of any article included in the same class embodying
the
registered design or a design not substantially different from the
registered design “so that he shall have and enjoy
the whole
profit and advantage accruing by reason of the registration”
(Burrell at 503). From this it follows that conduct
which
constitutes an element of infringement is the making, using,
importing or the disposing of any article included in the same
class
as the registered design if that article embodies the registered
design or a design not substantially different from the
registered
design.
[50] The first step in the determination of
infringement of a registered design is to ascertain whether the
defendant or respondent
has made, used or imported or disposed of an
article. If the defendant/respondent has done any of those four
acts, the next question
is to determine whether the article that the
defendant had made or used or imported or disposed of is in the same
class as the
class in which the registered design is registered.
(Burrell at par 9.82 at 504). If it is not, there can be no
infringement
and that would mark the end the inquiry. If, however,
the position is that the article is in the same class as the class in
which
the registered design is registered, the inquiry must proceed
to the next stage. The next stage is to construe the representations

and definitive statement filed in support of the application for
registration to determine whether or not the allegedly infringing

design falls within the scope of the design registration (Burrell at
par 9.82 at 504). The definitive statement is central to
the inquiry
and it plays a role that is akin to a claim in a patent specification
(ibid).
[51] Whether or not the allegedly
infringing design is or is not an infringement of the registered
design is determined by the eye
of the court through the spectacles
of the likely customer of the class of article to which the
registered design is applied (Burrell
par 9.82 at 504). The two
must be viewed side by side and separately (Burrell at par 9.82 at
504). Burrell says that the test
is: has the alleged infringement
substantially the same appearance as the registered design? (Burrell
at par 9.82 at 504). In
support of this Burrell cites the case of
Tesla Radio
Corporation of South Africa (Pty)
Ltd v Mullar SA (Pty) Ltd,
1957 (4) SA 140(W)
at
141 A-B
.
In Homecraft the Appellate Division formulated the test for the
determination of infringement of a design thus:
“ The test for infringement is
whether the article alleged to infringe embodies the registered
design or a design not substantially
different from the registered
design. (s15(1)). This must be decided by the eye, and in applying
this visual test the Court must
bear in mind the reaction of the
likely customer. The two designs must be viewed and compared side by
side and also separately.
Ultimately it may be a matter of degree”.
Burrell points out that it is sometimes
necessary to determine what the essential features of the registered
design are and, if
the essential features have not been adopted,
according to Burrell there will be no infringement (Burrell ibid).
If there is no
specific claim in the definitive statement of any
particular feature or features of the design, depicted in the
representations,
the design registration is a registration for the
design as a whole. In such a case another design will only be an
infringement
of the registered design if it is not substantially
different from the registered design looked at as a whole (Burrell at
par 9.82
at 504). According to Burrell, where a special feature is
claimed in the definitive statement, anyone copying such a special
feature
would be guilty of an infringement although apart from the
feature, he had not come so near the registered design as a whole to

be an infringer (Burrell at par 9.82 at 505).
[52] The determination of design
infringement involves the determination of whether or not the
respondent’s product embodies
the registered design or a design
not substantially different from the registered design. The search
is not for differences but
for substantial ones. (Clipsal, par 21).
In Clipsal, the Supreme Court of Appeal rejected the application of
the notion of imperfect
recollection in the field of design law. It
emphasized that in the determination of design infringement the test
is, unlike in
the law of trade marks, not whether or not there is
confusion or deception. It said that the test for the determination
of design
infringement is closer to the test for the determination of
patent infringement (Clipsal, par 22).
[53] In Clipsal the court invoked a
passage from the
Incandescent Gas
Light Co v de Mare etc System
13 RPC 301
at 303
and said in effect that that passage which was in respect of the
determination of the infringement of a patent, revealed the test
for
the determination of design infringement. The passage from The
Incandescent Gas Light case reads as follows:
“When, however, you come to make
that comparison, how can you escape from considering the relative
magnitude and value of
the things taken and 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”.
After quoting this passage with approval in
Clipsal, the Court immediately went on to compare the alleged
infringer’s product
with the registered design. In par 25 of
the judgment the Court said in part:
“There is against this background
another way of determining whether there was infringement and that is
to ask whether, if
the respondents’ article had been part of
the prior art, the design would have been new. The answer must be no
because the
move of the position of the switches and the removal of
the steps on the narrow sides of the surrounds would have been
regarded
as trade variants. What anticipates if earlier, in general
terms, infringes if later, the converse of the general rule mentioned

earlier. It follows that the differences, which are per se
insubstantial, do not save the respondents from infringing”.
[54] Whether or not the respondent’s
Chespak crate is an infringement of the applicant’s registered
design must be decided
by the eye, bearing in mind the reaction of
the likely customer (Southwood, J in Sunsmart’s case at par
24). In support
of this statement the Court in Sunsmart cited
Homecraft Steel Industries (Pty)
Ltd v S.M
Hare
& Son (Pty) Ltd and Another 1984(3) SA 681 (A) at 6491
.
After this the Court in Sunsmart went on to say, applying this test,
that its view was that the defendant’s flag or banner
was not
substantially different from the plaintiff’s registered design
and, unless the design registration was invalid, the
defendant’s
product infringed the plaintiff’s design (Sunsmart’s case
at par 25).
[55] The applicant contends that the
Chespak crate of the respondent is strikingly similar to the
registered design and embodies
the registered design or a design not
substantially different from the registered design. If this is
correct, then, the respondent’s
Chespak crate would be an
infringement of the applicant’s registered design because it is
common cause that the applicant
did not consent to the respondent
making, using or importing or disposing of the Chespak crate. In
support of its contention that
the Chespak crate is strikingly
similar to the registered design or embodies the registered design or
a design not substantially
different from the registered design, the
applicant says in the founding affidavit that all the main features
of the registered
design appear in the Chespak crate. The applicant
identifies a number of important features of the registered design as
its main
features. It sets them out in paragraphs 6.5.1 to 6.5.7 of
its founding affidavit. I deal with these features below as well as

the respondent’s answer to those paragraphs.
[55.1]
Annexure
HJS 3.1 to the founding affidavit
The applicant has provided a
photograph of a side by side plan (top) view comparison of the
Chespak crate and the registered design.
The applicant says at par
6.5.1 of the founding affidavit that this comparison shows that all
of the features of the registered
design have been incorporated into
the Chespak crate. The applicant says that the shape and
configuration of the Chespak crate
and the registered design are
identical. It further says that importantly the elongate non-rotate
ribs on the primary and secondary
support posts are clearly evident
in the Chespak crate (in identical form to the registered design).
In the photograph marked
“HJS 3.1” the ribs are marked as
“A”.
[55.2]
Annexure
HJS 3.2 to the founding affidavit
In par 6.5.2 of its founding
affidavit the applicant refers to annexure “HJS 3.2” to
the founding affidavit which it
says is a “perspective (top)
view comparison of the Chespak crate and the registered design”.
The applicant points
out in par 6.5.2 that the elongate non-rotate
ribs are clearly visible on the Chespak crate. It points out further
that the non-rotate
flags located on the tertiary posts of the
registered design are also clearly evident on the Chespak crate.
These are marked “B”
in annexure “HJS 3.2”.
The applicant also draws attention to the step-like bearing
formations which points are clearly
visible on both the primary and
secondary posts of the Chespak crates.
[55.3]
Annexure
“HJS 3.3” to the founding affidavit
The applicant says in par 6.5.3 of
the founding affidavit that annexure “HJS 3.3 (I) and (II) to
the founding affidavit are
“perspective (top) close up views of
the Chespak crate showing features “A” and “B”
referred to above
of the registered design more clearly.
[55.4]
Annexure
“HJS 3.4” to the founding affidavit.
The applicant points out that
annexure “HJS 3.4” to the founding affidavit is a
side-by-side comparison of the “perspective
(bottom) views of
the Chespak crate and the registered design”. The applicant
points out in par 6.5.4 of the founding affidavit
that the Chespak
crate includes all of the features of the registered design. In
particular the applicant points out that the
shape and configuration
of the Chespak crate are the same as the shape and configuration of
the registered design. The base-sliding
surface of the registered
design is marked “C” in annexure “HJS 3.4”.
The applicant also draws attention
to “the flared mouth and
closure receiving socket features” of the registered design
which are present in the Chespak
crate. These are marked “D”
in annexure “HJS 3.4” on the Chespak crate.
[55.5]
Annexure
“HJS 3.5” to the founding affidavit.
The applicant avers in par 6.5.5
of the founding affidavit that annexure “HJS 3.5” is a
perspective (bottom) view comparison
of the Chespak crate and the
registered design. The applicant says that the features in the
registered design are present in the
Chespak crate.
[55.6]
Annexure
“HJS 3.6” to the founding affidavit
In par 6.5.6 of the founding
affidavit the applicant says that annexure “HJS 3.6” is a
“close up” view of
the features depicted in annexure “HJS
3.5” referred to above. The applicant points out that in
particular the flared
mouth, which is marked as “E” and
the cylindrical closure-receiving socket, marked “F”,
which are collectively
shown as “D”, are both clearly
illustrated in the Chespak crate.
[55.7]
Annexure
“HJS 3.7” to the founding affidavit.
In par 6.5.7 of the founding
affidavit the applicant says that annexure “HJS 3.7” to
the founding affidavit is a side
view comparison of the Chespak crate
and the registered design.
[55.8]
Annexure
“HJS 3.8 to the founding affidavit.
The applicant points out in par
6.5.7 of the founding affidavit that annexure “HJS 3.8”
to the founding affidavit is
an end view comparison of the Chespak
crate and the registered design.
[56] In paragraphs 58.1 to 58.12 of its
answering affidavit the respondent responds to paragraph 6.5 of the
applicant’s founding
affidavit which refers to, and deals with,
annexures “HJS 3.1” to “HJS 3.8” to the
founding affidavit which
I have discussed above. In paras 58.1 to
58.12 the respondent focuses not so much on saying that the Chespak
crate does not have
the features dealt with in par 6.5 of the
founding affidavit (although in a limited way it does this), but in
the main it focuses
on seeking to show that a comparison of the
registered design and the closest prior art reveals that Megapak
97/10112 and Megapak
86/1447 anticipated the applicant’s
registered design and, therefore, the registered design was neither
new nor original.
I have above dealt with the respondent’s
defence that the applicant’s design was not new and original
and found that
the defence cannot be sustained on a comparison of the
registered design and the prior art. Accordingly, I rejected the
defence.
I do not therefore, propose to repeat here what I said
earlier when discussing that defence.
[57] I have carefully examined
annexures “HJS 3.1” to “HJS 3.8” to the
founding affidavit. I agree with
the applicant that the Chespak
crate is strikingly similar to the registered design. My evaluation
is that such differences as
there are between the applicant’s
design and the respondent’s crate are immaterial differences.
In terms of sec 20
of the Act the registration of a design confers
upon the registered proprietor of such design in the Republic the
right to exclude
others from making, importing, using or disposing of
any article included in the class in which the design is registered
which
embodies the registered design or a design not substantially
different from the registered design. I have no hesitation in
concluding
in this case that, in my view, the Chespak crate embodies
the applicant’s registered design or a design not substantially

different from the registered design and is strikingly similar to the
applicant’s design. It is common cause that the respondent’s

crate is included in the class in which the applicant’s design
is registered. It is also common cause that the applicant
did not at
any time give the respondent consent or authority to make or use the
Chespak crate. In the light of all this the conclusion
has to be that
the respondent has infringed the applicant’s right provided for
in sec 20 of the Act. I conclude, therefore,
that the Chespak crate
constitutes an infringement of the applicant’s registered
design. With regard to costs, the respondent
did not argue that this
was not a case in which the applicant was justified in employing the
services of two Counsel. I am satisfied
that the employment of two
Counsel was warranted in this case. I record that the respondent
abandoned an application for the revocation
of the registration of
the applicant’s registered design. This was because it had
failed to cite the Registrar of Designs
and to serve the papers on
him.
[58] In the premises I make the
following order:
the Respondent is hereby interdicted from
infringing the applicant’s South African registered design
number A2000/141 (
hereinafter “the registered design”)
by making, using, importing and/or disposing of any product falling
within the
scope of the registered design during the currency of the
South African design.
the respondent is ordered to deliver up
to the applicant any infringing product or any article or product of
which the infringing
product forms an inseparable part.
there is to be an inquiry into damages
suffered by the applicant as a result of the respondent’s
infringement of the applicant’s
South African registered
design number A2000/141.
should the parties be unable to reach
agreement as to the future pleadings to be filed and served,
discovery, inspection and other
matters of procedure relating to the
inquiry referred to in (c) above, either party is hereby granted
leave and authorised to
make an application to this court for
directions thereto.
it is hereby certified in terms of sec
41of the Designs Act, 1993 (Act 195 of 1993) that the applicant’s
South African registered
design number A2000/141 is valid.
the respondent is to pay the applicant’s
costs, such costs to include those consequent upon the employment of
two counsel.
ZONDO, J
Appearances:
For the applicant : Mr. L. Bowman SC
(with
Mr.G. D. Marrott).
Instructed by : D. M. Kisch Inc,
Pretoria.
For the respondent : Mr. A. J. Bester SC
Instructed by : Hahn & Hahn,
Inc.,Pretoria
Date of hearing : 7 February 2011
Date of order : 30 September
2011
Date of full judgment : 6 October 2011