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[2026] ZAGPPHC 214
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Zentia Trading (Pty) Ltd v Eva-Last Distributors (Pty) Ltd and Others (079625/2024) [2026] ZAGPPHC 214 (16 March 2026)
REPUBLIC
OF SOUTH AFRICA
IN
THE HIGH COURT OF SOUTH AFRICA
GAUTENG
DIVISION, PRETORIA
Case Number: 079625/2024
(1)
REPORTABLE: YES
(2)
OF INTEREST TO OTHER JUDGES: YES
(3)
REVISED: YES
In
the matter between:
ZENTIA
TRADING (PTY) LTD
Applicant
and
EVA-LAST
DISTRIBUTORS (PTY) LTD
First Respondent
THE
REGISTRAR OF DESIGNS
Second Respondent
Heard
on:
13 February 2026
Delivered:
16
March
2026 - This judgment was handed
down electronically by circulation to the parties' representatives
by email, by being uploaded
to the
CaseLines
system
of the GD and by release to SAFLII. The date and time for hand-down
is deemed to be 14:00 on 16 March 2026.
Summary:
Designs –
Designs Act 195 of
1993
– revocation application in terms of
section 31
–
alleged lack of novelty – designs disclosed
to the public – “public availability” –
information communicated
to a person and such person is free both in
law and equity to do what they like with the information –
information was given
to a member of the public.
Novelty – two main
enquiries – prior act was publicly available before
registration or the release date – disclosure
sufficient to
destroy the novelty of the designs – both requirements were
met.
Disclosure –
two-step process – whether the evidence submitted by the
applicant proves an event of disclosure –
whether the design
holder was able to demonstrate that the event of disclosure could not
reasonably have become known in the normal
course of business to the
relevant circles.
Regulation 12(1)(c)
of
the
Designs Act – Form
D3 must include a declaration by the
applicant that it is the proprietor of the design; alternatively, a
power of attorney is required
where an agent is appointed.
“
Prescribed
manner” –
section 15
– the registrar was required
to consider the application “in the prescribed manner” –
in accordance with
the Act and its Regulations.
ORDER
It is ordered that:-
1.
The registration of the following designs
are revoked in accordance with
section 31(1)(a)
, (c) and (e) of the
Designs Act 195 of 1993
and the registrar of Designs is ordered to
remove the following designs from the Design Register:
a.
A2016/01137;
b.
F2016/01138;
c.
A2016/01139;
d.
F2016/01140;
e.
A2016/01141;
f.
F2016/01142;
g.
A2016/01143;
h.
F2016/01144;
i.
A2016/01145;
j.
F2016/01146;
k.
A2016/01147;
l.
F2016/01148;
m.
A2016/01149;
n.
F2016/01150;
o.
A2016/01151 and
p.
F2016/1152.
2.
The first respondent is ordered to pay the
costs of this application on scale C.
3.
The counter-application is dismissed with
costs on scale C.
JUDGMENT
KOOVERJIE
[1]
The applicant,
Zentia Trading (Pty) Ltd (“Zentia”), instituted this
application in terms of
section 31
of the
Designs Act 195 of 1993
as
amended (“the Act”). It seeks revocation of the
registered designs of the first respondent. The first respondent
is
Eva-Last Distributors (Pty) Ltd (“Eva-Last”), who is the
proprietor of 16 registered designs pertaining to arched
deck boards
(“the boards”).
[2]
Eva-Last has
opposed this application and further instituted a
counter-application. In opposition, it raised the defence of
res
judicata
and, alternatively, abuse of process. In its counter-application,
Eva-Last seeks to prevent Zentia from importing, selling, and
distributing products which are similar to Eva-Last’s
registered designs. In order to bolster its counter-application,
Eva-Last
filed an additional affidavit. Zentia has opposed the filing
of such an affidavit.
[3]
Zentia’s
revocation application is premised on two main grounds, namely that:
3.1
The design
registrations are invalid as the designs lack novelty. The designs
that formed part of the state of the art prior to
the date of the
application for registration, or
alternatively,
the release date of the registered designs, are rendered ineligible
for registration.
3.2
Eva-Last had
deliberately made misrepresentations in completing the D3 form
submitted to the registrar of designs during the application
process
for the designs. This constitutes a ground for the revocation of the
designs.
The
main issues for determination
[4]
The main
issues for determination are the following:
4.1
Whether Eva-Last’s defence of
res
judicata,
alternatively, abuse of
process has merit.
4.2
Whether the registration of the designs should be revoked on the
grounds that:
(a)
the designs lack novelty and form part of the state of art prior to
the registration; and
(b)
the registrations were procured through misrepresentations by
Eva-Last during the registration
process.
4.3
Whether there is merit in the counter-application filed by Eva-Last.
4.4
Whether the additional affidavit filed by Eva-Last should be
condoned.
Background
[5]
Eva-Last is an
importer and distributor of wood plastic composite (WPC) and bamboo
polyethylene composite (BPC) products. As part
of its business, it
manufactures, imports, and distributes products which include
decking, cladding, railings, pergolas, decorative
beams and indoor
flooring. It does not install its products but sells it to
contractors, who in turn sell and install the boards.
[6]
Zentia trades
as “Best Deck” and sells arched deck boards of different
arch depths. Both Zentia and Eva-Last are competitors
in this market.
[7]
The defining
characteristic shared by all 16 registered trade designs is the arch
feature on the underside of the boards, which
is referred to as
“arched deck boards”. The designs reflect a distinctive
arch profile on the underside of the WPC
or BPC decking boards. These
designs were published in the Patent Journal on 31 August 2016. They
were registered as both aesthetic
and functional designs (Part A and
Part F of the register, respectively). Although the notices of
registration were issued between
23 March 2018 to August 2018, and
the registration certificates signed later, designs are deemed to be
registered from the date
of application (11 August 2016) or the
release date (27 April 2016).
Points
in limine
[8]
The
res
judicata
point was raised on the basis that the revocation issue has already
been dealt with by the Western Cape High Court, under case
number
1729/2022. In the said matter, Eva-Last applied to amend its design
registration certificates to include the release date
to be 27 April
2016. Zentia belatedly participated in these proceedings, joined
issue with the respondent (Timmdek), and filed
similar papers as
Timmdek (Pty) Ltd (Timmdek) in respect of both the infringement and
the revocation application. Initially, the
lis
was between Eva-Last and Timmdek.
[9]
In the said
application, Eva-Last sought to interdict and restrain Timmdek from
its continued design infringement. In addition,
it filed its
application for amendment of the registered design. Timmdek, in turn,
instituted revocation proceedings against Eva-Last
but did so before
this court. Subsequently, the revocation proceeding was transferred
to the Western Cape High Court for the simultaneous
adjudication of
all the issues between the parties. At some stage, Timmdek withdrew
from the proceedings. This left Zentia as the
only opposing
respondent. Zentia took issue not only with the amendment sought by
Eva-Last but argued on the revocation aspect
as well. The court,
after hearing the parties, granted the amendment application
confirming the release date to be 27 April 2016
(Wille J’s
judgment).
[10]
In the
application for leave to appeal judgment, Wille J confirmed that he
confined himself only to the application for the amendment
and that
another court would consider the revocation application. The relevant
portions of his judgment reflect this. He expressed:
“
(11)
ZT has launched a discrete revocation application that seeks, among
other things, to entirely revoke all
EL’s designs due to lack
of novelty. In due course, this latter court will no doubt consider
the designs that were registered,
including the amendment of the
release dates.
(12)
I say this because, upon the court’s order, the release dates
were amended, and the insertion
of the release dates was attended to
evidently without any great effort. Self-evidently, including these
release dates through
the amendment process (because of the order I
granted) does not
prejudice or divest ZT of the right to raise
issues surrounding the ‘prior art’ at the hearing of the
pending revocation
application.
(13)
Further in deciding whether an order is appealable, the form of the
order and its effect must
be considered. Also if I grant leave to
appeal, resolving the fundamental issues between ZT and EL will take
longer. Thus,
the amendment decision appealed against would not
dispose of all the problems in the case and the
outcome of the
revocation application will hopefully finally resolve the real issues
between the parties.
(17)
The
court dealing with the revocation application will be best placed to
assess whether the proposed amendments I granted amounted
to
amendments to the actual designs themselves. In addition, the court
dealing with the revocation application would be in the
best possible
position to determine whether ZT could have legally relied on the
grounds of continued invalidity when it opposed
the amendments
.”
[1]
[11]
During
argument, counsel for Eva-Last no longer persisted to advance
argument on this point. On my reading of the judgment, Wille
J
clearly expressed that the issue of revocation would be determined by
another court. Even though the court remarked on the novelty
of the
designs, it did not express any conclusive findings. Consequently,
the
res
judicata
defence, alternatively the abuse of process, have no merit.
Legal
framework
[12]
It is
appreciated that the design registration system encourages good
designs, which would ultimately be to the benefit of the public.
The
designer who initiated the design should therefore be rewarded for
such design and protected against those who seek to “steal”
the designs. This protection is offered to the proprietor for several
years. It is only after the expiration of the design registration
that the design becomes available for general utilisation.
[13]
This
revocation application is instituted in terms of
section 31(1)(a)
;(c)
and (e) of the Act which stipulates:
“
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-
(a)
that the application for the registration of the design was not made
by
a person entitled thereto under
section 14
;….
(c)
that the design in question is not registrable under
section 14
; ….
(e)
that the application for the registration of the design should have
been refused in terms
of
section 16.
”
[14]
Section 16
states:
“
If
it appears to the registrar that an application was not made in the
prescribed manner, he shall refuse the application.”
[15]
Section 14(1)
of the Act makes provision for a proprietor of a design to apply for
the registration of such designs, provided that the requirement
of
novelty as set out in
section 14(2)
is met.
Section 14(2)
stipulates:
“
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 the 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 the
registration of such design has not been lodged-
(a)
in the case of an integrated circuit
topography, a mask work or a series of mask work within two years; or
(b)
in
the case of any other design within six months, of such release
date.”
[2]
[16]
Generally, a
design registration will be valid upon presentation of a certificate
of registration. This constitutes
prima
facie
proof of the registration of the design and the ancillary aspects
stipulated in the certificate.
[17]
In this case,
the designs were both functional and aesthetic and could only be
registered if they were “new”. As alluded
to above, in
terms of
section 14(2)
of the Act, a design shall be deemed to be new
if it is different from or it does not form part of the state of the
art immediately
before the date of the application for registration
thereof or the release date thereof, whichever is the earlier.
[18]
The “release
date” is the date on which the design is first released to the
public with the consent of the proprietor.
If the release date occurs
before the application for registration is filed, it may constitute a
novelty destroying occurrence.
In this case, the “registration
date” was 11 August 2016, and the “release date”,
as confirmed by Wille
J, was 27 April 2016.
The
test in assessing disclosure to the public
[19]
I
find guidance from the matter of
Seventh
Generation Ventures Inc v Formaster SA
,
[3]
where the court outlined a two-step process in assessing if
disclosure had been made and held that an overall assessment must be
made taking into account all factors. It expressed:
“
The
assessment of disclosure therefore requires
a
two-step-analysis, namely the assessment of whether the evidence
submitted by the invalidity applicant proves an event of disclosure
prior to the filing date of the contested RCD followed by the
assessment of whether the design holder was able to demonstrate that
this event of disclosure could not reasonably have become known in
the normal course of business to the relevant circles
(
Crocs
Inc
EU: T:2018:137 [48].
In
order to establish the disclosure of a prior design,
an
overall assessment must be made taking into account all the relevant
circumstances of the particular case
.
The disclosure cannot be proved by means of probabilities or
suppositions, but must be demonstrated by solid and objective
evidence.
Such
evidence must be considered in its entirety.
While
some elements of the evidence considered on their own may be
insufficient to demonstrate the disclosure of a prior design,
the
fact remains that, when combined or in conjunction with other
documents or information they can contribute to the proof of
disclosures. In order to assess the evidential value of a document,
it is necessary to verify the plausibility and the accuracy
of the
information which that document contains taking into account, inter
alia the origin of the document, the circumstances in
which it came
into being, the person to whom it was addressed and whether, on its
face, the document appears to be sound and reliable
(
Basil
v EUIPO - Artex (Paniers spéciaux pour cycles
)
(T-760/16) EU:T:2018:277, [42];
Gramberg
v EUIPO - Mahdavi Sabet (Étui pour telephone portable)
(T-166/15) EU:T:2018:100, [23]–[25];
Coverpla
EU:T:2012:117, [24]–[26]).”
[4]
The
disclosure of the price list
[20]
It is Zentia's
case that the designs are no longer new due to the various
disclosures made. It was argued that Eva-Last availed
the designs to
the public during December 2015 and 27 January 2016 and that these
disclosures constituted novelty destroying occurrences.
The novelty
of the designs had been destroyed on two occasions, namely:
20.1
when Eva-Last distributed its price list in January 2016, and;
20.2
when the boards were installed at the Century City Stay Easy Hotel
(Hotel) in December 2015.
[21]
In opposition,
Eva-Last defends the novelty of the designs on the grounds that:
first, it was afforded a 6 months’ grace period
(a protection
afforded by the Act) which allowed it to market and test the
commercial viability of the boards. Second, the price
lists were
intended only for its contractor clients and did so on a confidential
basis. Third (and in the alternative), in the
event that the court
finds that disclosure was made to the public, it invokes
section 17
of the Act on the basis that it did not give consent for the designs
to be shared with the public.
[22]
Section 17
reads:
“
The
registration of a design shall not be invalid by reason only of the
fact that the design was disclosed, used or known prior
to the
release
date
if the proprietor proves that such knowledge was acquired, or such
disclosure or use was made, without his knowledge or consent
,
and that the knowledge acquired or the matter disclosed or used was
derived or obtained from him, and that he applied for and
obtained
protection for his design with all reasonable diligence after
learning of the disclosure, use or knowledge.”
[5]
The
distribution of the price list
[23]
Section
14(2)(b)
of the Act requires that the application for the
registration of the design be made within six months of the release
date (grace
period). A design product can be released prior to
registration, and in this period (6 months), the proprietor will not
lose its
entitlement to register. This grace period allows
proprietors to test the products for commercial viability prior to
the design
registration. Zentia alleged that in this case, the
designs lost their novelty when Eva-Last made the disclosures prior
to the
release date (that is, before 27 April 2016).
[24]
It is not in
dispute that Eva-Last availed the price lists on 27 January 2016,
wherein the design profiles were included. The boards
were referred
to as the “arched decking” profile and marketed as
“infinity arched “boards. It utilised
the services of an
independent party (Low Fat) to transmit the price list. Eva-Last
maintained that the price list was only circulated
to its contractor
clients and was never intended for the public. It was established
that Low Fat, an independent entity who assisted
clients in marketing
their products, had assisted Eva-Last in a similar way.
[25]
To demonstrate
that the price list was only circulated to its contractor clients,
Eva-Last contended that the product was sent to
one of its clients,
Euro Decking, who installed the product at the hotel. It also relied
on the affidavits of two of its contractor
clients, Mr. Davis and Mr.
Potgieter, who confirmed that the price list was intended to be
confidential.
[26]
At
this juncture, it is convenient to have regard to the affidavits,
namely that of Mr. Schumann and Mr. Schultz, who presented
their
version supporting Zentia’s version, and Mr. Davis and Mr.
Potgieter, who supported Eva-Last’s version. Having
considered
same, I am inclined to treat them with caution as the probability
exists that their affidavits may have been crafted
to support the
parties’ versions.
[6]
[27]
It was brought
to my attention that Mr. Schumann had previous business dealings with
Eva-Last that soured. In these papers, both
Mr. Schumann and Mr.
Schultz are identified as contractor clients of Eva-Last. According
to Eva-Last’s version, their business
relationship with
Eva-Last deteriorated. They particularly alleged, in their respective
affidavits, that they received the price
lists, but were not informed
that it should be treated as confidential. Mr. Schumann also alleged
that between December 2015 to
February 2021, he installed boards for
customers on their premises without being advised that the
installations were not to be
accessed by the public. He exercised no
confidentiality restrictions when liaising with his customers. This
version is corroborated
by Mr. Stumges, whose evidence is dealt with
below.
[28]
Eva-Last
relied on the versions of Mr. Davis and Mr. Potgieter. The wording in
Mr. Davis's and Mr. Potgieter’s affidavits
is identical. They
are, however, of little assistance to the court as they do not
address the pressing issue, that is, whether
they were informed by
Eva-Last to keep the price list confidential. They merely allege that
it was considered to be industry practice
to treat the price lists in
a confidential manner. They expressed:
“
..
the price list is not for the public disclosure as it lists the
recommended retail prices or base retail prices for calculation
of
final retail prices, and to which an installing contractor would
purchase the decking boards and related products for Eva-Last.”
[29]
I have also
noted that they do not explain how they marketed Eva-Last’s
products to their respective customers. In my view,
it was inevitable
that the design profiles had to be made available to their customers
even if the prices were not shared. Customers
would only purchase
products if they had sight of what they were purchasing.
[30]
Mr. Chapman
belatedly filed an additional affidavit where he set out the
relationship between Eva-Last and Mr. Reardon of Low Fat.
It was
alleged that Mr. Reardon distributed the emails from his business
platform to the recipients on behalf of Eva-Last. Having
noted
Eva-Last’s contentions, I am inclined to allow the affidavit as
it is in the interest of justice to consider it. Moreover,
Zentia is
not prejudiced as it had responded thereto, and which version I duly
considered.
[31]
However, I
find that the additional submissions do not assist Eva-Last. In
particular:
31.1
Mr. Rabie (the attorney for Zentia) who deposed to the answering
affidavit in opposition to the additional affidavit
filed by
Eva-Last, alleged that he directly contacted Mr. Reardon, who
informed him that he was unable to remember to whom he sent
the
emails, as they were sent a long time ago.
31.2
Mr. Reardon also advised Mr. Rabie that the mailing list was stored
on his personal laptop, but after the closure
of his business, such
data was not backed up. He also indicated that the hard drive on the
laptop had been damaged and thus cannot
be accessed. Simply put, he
was unable to provide the list of recipients to whom he had sent the
emails. However, in a later version,
it was, however, alleged that
the mailing list was treated confidentially, that the list was
deleted, and the mailing list reflected
only the details of the
contractor clients of Eva-Last. These allegations are once again not
substantiated.
31.3
It is further necessary to highlight the manner in which Mr. Reardon
became involved in the matter. Mr. Reardon
was initially contacted by
the legal representative of Zentia. This caused Mr. Reardon to then
contact Eva-Last. It was arranged
that his affidavit would be filed
supporting Eva Last’s version.
[32]
What
is meant by the expression “made available to the public”
was decided in
McCauley
Corporation v Brickor Precast (Pty) Ltd
,
[7]
where the court with reference to the handbook prepared by the
Chartered Institute of Patent Agents on the British Patent Act of
1997, expressed that:
“…
.
the state of the art includes anything which is in possession of any
member of the public which he may disclose to others without
any
inhibiting fetter of confidence whether express or implied …
there must be a non-confidential disclosure to another:
mere
disclosure (as in
Catnic v Evans
[1983] FSR 410)
would not appear to surface.”
[33]
I
further refer to the matter of
Humpherson
v Syer
,
[8]
where
the court distilled the test to be applied when determining the
concept of “public availability”. The said court,
in
essence, held that if information is communicated to a person, and
that person is free both in law and equity to do what they
like with
the information, then it entails that the information was given to a
member of the public. The court expressed:
“
I
put aside questions of public use, and treat this as a question of
whether there has been a prior publication; that is, in other
words,
had
this information been communicated to any member of the public who
was free in law and equity to use it as he pleased.
Was Widmer a person to whom this communication had been made in a
manner which left him free both in law and equity to do what
he liked
with the information,
if
so, the information, of course, had been given to a member of the
public
,
and there was nothing further to serve as consideration for any
patent.”
[9]
[34]
In summary,
having considered the evidence holistically, in my view, Eva-Last has
failed to prove that the price list was not shared
with the public
for the following reasons:
34.1
No correspondence in the form of a note on the price list to the
contractor clients or in an email correspondence
with Low Fat,
setting out that the price list was to be treated confidentially, has
surfaced. Put differently, Low Fat was not
informed that the price
list should only be distributed to the contractor clients and was not
intended for the public.
34.2
The confidentiality argument is unassailable. Even if Eva-Last
intended the price list to be circulated only to
its clients, it had
no control over how the recipients would deal with the price list.
Such recipients were at liberty to distribute
the price list to whom
they pleased.
34.3
There can be no doubt that the contractor clients, in their own
marketing, would at least share the designs with
their customers.
Customers would only show interest if they understood the products,
particularly the specifications and quality
of the boards.
34.4
Neither Eva-Last nor Low Fat could provide a list of the contractor
clients to whom the price list was sent to.
In fact, Eva-Last alleged
that the list of its clients cannot be disclosed to its competitor,
Zentia.
[10]
34.5
Moreover, the disclosures were not made during the 6-month trial
period, that is, between the release date and
the registration date.
It is common cause that the disclosures were made in December 2015
and January 2016.
Installation
of the products prior to the release date
[35]
It is common
cause that in December 2015, the products were installed at the
hotel. Zentia argued that due to this occurrence, the
novelty of the
designs was destroyed. Eva-Last contended that the installation was
part of a market research phase and it was entitled
to a grace period
to conduct its product research and the installation was conducted at
a controlled site and product development
was necessary before it
could introduce the new product into the market. The purpose of these
processes was to ensure that the
new product was market-ready. Hence,
at the end of 2015, Eva-Last undertook product trials to validate the
new arch deck board
designs. It was under these circumstances that
Eva-Last provided the arch deck boards to Euro-decking to install at
control sites
for testing.
[36]
In my view,
Eva-Last’s explanation does not assist it. Section 14(2)(b) of
the Act makes provision for testing products over
a six-month period,
that is, between the release date and the date of registration. A
proprietor thus has a maximum of six months
for product testing. The
Act specifically does not provide for a grace period trial beyond the
six-month grace period. In this
matter, the installation occurred in
December 2015 outside of the six-month grace period.
[37]
Furthermore,
Mr. Stumges, the hotel manager at the time, as well as Mr. Schumann
of Euro-Decking, responsible for installing the
boards at the hotel,
confirmed that the boards were installed in the ordinary course of
trade with no obligation on them to maintain
confidentiality or
restrict access to the boards. I have further noted that the boards
were also installed by Euro-Decking, at
another of its client’s
site “Welgelegen”, during the period January to March
2016.
[38]
To counter
this evidence, particularly Mr. Stumges' version, and persist with
its view that the disclosure was not made to the public,
Eva-Last was
required to furnish credible evidence in the form of
inter
alia
non-disclosure clauses or correspondence to Low Fat and its
contractor clients informing that the design profiles were not to be
made available to the public.
[39]
Zentia also
pointed out that Eva-Last was actively marketing and selling its
product. It referred to two specific tax invoices issued
in April
2016 and May 2016 which reflected that the products had in fact been
sold. This again demonstrates that this period was
not merely a
product testing phase.
[40]
Further, in
applying the “Humpherson principle”, Eva-Last had no
control over the disclosure of the price lists. In
this instance,
nothing prevented the contractor clients from disclosing the price
lists and/or the design profiles to the public.
[41]
The section 17
defence also does not assist Eva-Last as it was unable to prove that
such knowledge was acquired or such disclosure
or use was made,
without its knowledge or consent.
[42]
It was pointed
out that section 17 of the Act could have assisted Eva-Last if it had
applied for the earlier registration of its
designs when it made the
premature disclosures.
[43]
In applying
the test set out in the
Seventh
Generation Ventures
matter,
and having considered all the evidence holistically, in my view,
Eva-Last has been unable to demonstrate that the disclosures
were not
made public.
Has
the novelty been destroyed
[44]
To assess the
novelty of the design, two distinct enquiries are necessary, first,
whether the prior art was publicly available before
the registration
date or release date and whether it met the legal criteria for
anticipation. In this instance, the probabilities
exist that
disclosure of the designs was made to the public.
[45]
The
second enquiry, then, is to determine if the alleged anticipation is
deemed effective. In other words, was it sufficient to
destroy the
novelty of the alleged design as claimed in the definitive
statement?
[11]
[46]
By virtue of
section 14(3)(b) of the Act, the following disclosures and factors
qualify as effective anticipation if occurring immediately
before the
date of application for registration of the design or the release
date (whichever is the earlier), namely, all matters
contained in an
application:
(i)
for design registration in the Republic or
(ii)
in a convention country for a design which has subsequently been
registered in the Republic 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.
[12]
[47]
The
test is whether the registered designs are different from, or they do
not form part of the state of the art. The determination
of novelty
turns on whether a particular single prior art article, publication,
or illustration includes all the features of the
design as
registered, save for features that are immaterial or ordinary trade
variants.
[13]
[48]
Simply
put, one would ask whether the two appearances, each looked at as a
whole, are substantially different. Whether the design
registration
is new is to be judged solely by “the eye” when comparing
the design or prior art.
[14]
The question is whether the shape of the registered design differs
from the article or the design of which is claimed to have
anticipated the registered design.
[49]
In this
instance, the Definitive Statement contained in Form D6 for the
registered designs, A2016/01137 and F2016/01138 was worded
as
follows:
“
The
features of the design which protection is claimed include the
pattern and/or shape configuration of the
arch
deck board
substantially as illustrated in the accompanying representations. The
length; width; thickness ratios as shown are not claimed
and these
ratios can vary as required.”
[15]
[50]
The
object of having a definitive statement is to call attention to
special features forming the kernel of the author's idea. Where
a
specific feature in the definitive statement is claimed, anyone
copying the special feature would be guilty of infringement.
However,
in many cases, the novelty of the design in fact resides in the
appearance of the design as a whole and not in any isolated
aspect of
the design. Therefore, the pattern and configuration of the design
have to be considered as a whole for the purposes
of novelty and
infringement
.
[16]
[51]
It cannot be
refuted that the price list described the boards as “infinity
arched”, which is consistent with the description
in the
definitive statements of the registered designs, where reference is
also made to the “arched deck board”. This
confirms that
the prior art and the registered designs refer to the same product.
Eva-Last has not demonstrated any material difference
between the
prior art and the registered designs. I am of the view that this
finding renders the registration invalid under section
14 of the Act.
Consequently, the novelty of the designs has been destroyed due to
the said disclosures.
Revocation
in terms of alleged misrepresentation on registration of the design
[52]
The second
ground, which Zentia relied upon, was that at the registration stage,
when the Forms D3 were completed and submitted
to the registrar of
Designs, Eva-Last deliberately made misrepresentations to the
registrar.
[53]
Zentia pointed
out that Eva-Last failed to acknowledge that the proprietor of the
designs was fatal. This non-acknowledgement constitutes
a material
irregularity as Eva-Last could only have applied for the registration
of the designs if it were the proprietor.
[54]
On
my understanding, it is a fundamental requirement in terms of the
regulation 12(1)(c) that Form D3 includes a declaration by
an
applicant that it is the proprietor of the design and if an agent has
been appointed, then a power of attorney must be filed.
[17]
Only a proprietor of a novel design may apply for its registration.
The term “proprietor” is defined as:
“
(a)
the author of the design; or
(b)
where the author of the design executes the work for another person,
the other person for whom the work
is so executed; or
(c)
where a person, or his employee acting in the course of his
employment, makes a design for another person
in terms of an
agreement, such other person; or
(d)
where the ownership in the design has passed to any other person,
such other person.”
[18]
[55]
An application
for registration is prescriptive. The registrar is required to
examine applications for registration in terms of
section 15 “in
a prescribed manner” and consider if the requirements are met.
Section 15 of the Act governs the registration
of designs and section
15(1) enjoins the registrar of designs to “examine in a
prescribed manner” any applications
for registration of a
design.
[56]
Three
requirements must be met in order for the registrar to register the
design, namely:
56.1.
The registrar is required to examine the application.
56.2.
The examination of the application must be “in a prescribed
manner”.
56.3
The application must comply with the requirements of the Act, as well
as the Regulations thereto.
[57]
The
phrase “in the prescribed manner” in section 15(1) means
in the manner prescribed by the Act and Regulations promulgated
under
the Act. Clearly, the applicant had not complied with regulation
12(1)(c)
[19]
where the
registrar had to ensure that the Form D3 included a declaration by
the applicant that it is the proprietor of the designs.
[58]
Section
31(1)(a) of the Act states that the registration of a design may be
revoked on the grounds that the application for the
registration of
the design was not made by a person entitled thereto under section
14. Section 31(1)(e) states that the registration
of a design may be
revoked if such registration of the design should have been refused
in terms of section 16.
[59]
Eva-Last
however, argued that the deletion was a mere administrative/clerical
error. It went on to explain that when the representative
of Eva-Last
signed the Form D3, he assumed that the form was correctly completed.
Furthermore, the legal representative of Eva-Last,
as well as the
registrar, could have advised him of the irregularity. The mistake in
the completion of the Form D3 was only realised
when the amendment of
the design certificates was pursued in respect of the release date.
Eva-Last also contended that it did not
pursue to correct the
proprietorship issue when it applied to have the release date
altered.
[60]
Eva-Last also
pointed out that the registrar accepted the documents and allowed for
the registration of the respective designs.
When the issue with the
Form D3’s was in fact raised with the registrar during the
virtual meeting, the registrar failed
to draw Eva-Last’s
attention to the irregularity. Eva-Last submitted that it is, in any
event, the proprietor of the respective
designs as contemplated in
the Act, and this fact has not been challenged by Zentia.
[61]
In my view,
even if I were to accept Eva-Last’s explanation that it was a
clerical error, the law is specific, namely, the
designs could only
be registered by the proprietor. This is what regulation 12(1)(c)
prescribes. The fact that it could have been
an oversight on the part
of the registrar; does not assist Eva-Last. The declaration was
material to effect registration. I therefore
conclude that the
registration of the designs was impermissible. The registrar should
have refused the application in terms of
section 16.
[62]
The
effect of the registration of a design is to grant to the registered
proprietor the right to exclude others from making, importing,
using,
or disposing of any article in the class in which the design is
registered and embodying the registered design or design
not
substantially different from the registered design.
[20]
Consequently, the designs are further revoked in terms of section
31(1)(a) and section 31(1)(e) of the Act.
The
counter-application
[63]
In the
counter-application, Eva-Last sought relief in the form of damages
based on infringement proceedings. It claimed that Zentia
was
publicly selling its products (boards), which are copies of its
designs. Eva-Last explained that the infringement application
was
necessary but could not be instituted due to the delay in the pending
appeal in respect of Wille J’s judgment. In light
of my
findings, the counter-application cannot be sustained as the novelty
of the designs has been destroyed. In the premises,
the
counter-application is dismissed with costs.
Costs
[64]
During
argument, both parties accepted that the general principle, namely,
that the costs follow the result, should be applied.
The applicant
sought costs on scale C and the respondent on scale B. In exercising
my judicial discretion, I find that this matter
warrants costs on
scale C. The applicant, as the successful party, is entitled to its
costs on scale C. With the dismissal of the
counter-application, the
applicant is further entitled to such costs on scale C as well.
Order
[65]
The following
order is made:
1.
The registration of the following designs is revoked in accordance
with
section 31(1)(a)
, (c) and (e) of the
Designs Act 195 of 1993
and
the Registrar of Designs is ordered to remove the following designs
from the Design Register:
a.
A2016/01137;
b.
F2016/01138;
c.
A2016/01139;
d.
F2016/01140;
e.
A2016/01141;
f.
F2016/01142;
g.
A2016/01143;
h.
F2016/01144;
i.
A2016/01145;
j.
F2016/01146;
k.
A2016/01147;
l.
F2016/01148;
m.
A2016/01149;
n.
F2016/01150;
o.
A2016/01151 and
p.
F2016/1152.
2.
The first respondent is ordered to pay the costs of this application
on scale C.
3.
The counter-application is dismissed with costs on scale C.
H.
KOOVERJIE
JUDGE
OF THE HIGH COURT
GAUTENG DIVISION,
PRETORIA
Appearances
:
Counsel for the
applicant:
Adv. R Michau SC
Instructed
by:
De Chalains Attorneys
Pretoria
Counsel for the first
respondent: Adv. CL
Markram-Jooste
Instructed
by:
Bredenkamp Attorneys Inc
Pretoria
Date
heard:
13 February 2026
Date of
Judgment:
16 March 2026
[1]
Emphasis
added and footnotes omitted.
[2]
Emphasis
added.
[3]
[2019]
ECDR 20
at paras 24-25.
[4]
Emphasis added.
[5]
Emphasis added.
[6]
In
Kavanagh
Balloons Pty Ltd v Cameron Balloons
[2014] RPC 87
(
Kavanagh
Balloons
)
at para 56 the court expressed:
“
Witnesses
whose memories prodded by the eagerness of interest of interested
parties to elicit testimony favourable to themselves
are not usually
to be depended upon for accessible information.”
[7]
McCauley
Corporation v Brickor Precast (Pty) Ltd
1989 BP 314 (CP) at 333–334. The court expressed at 333:
“
In
short, in deciding whether an invention is new, a Court has
first to ascertain what formed part of the state of the art
at the
priority date. The state of the art comprises all matter made
available to the public without any geographical limitation.
It can
be made available by written or oral description, by use or in any
other way. The essential question is whether the material
was
available to the public. As to what is meant by this expression will
depend on the facts of each particular case. If the
invention
deals with a highly involved technical subject the word "public"
must mean something more than the ordinary
man in the street and I
think it means those persons to whom the specification is addressed.
Similarly the question whether the
material is "available to
the public" would appear to cover the concept that it is
available to the public anywhere
in the world.”
(Emphasis added.)
[8]
[1887]
4 RPC 407
(CA) at 413. See also
Monsanto
Company (Brignac’s) Application
[1971] RPC 153
at 159 and
Kavanagh
Balloons
above n 6
at
paras 45 and 46.
[9]
Emphasis added.
[10]
Eva-Last
however had the option to disclose the list to the court in
confidence.
[11]
This
second stage of the test, namely whether the alleged anticipation
which have been found to qualify as an effective anticipation
is a
quantitative comparative test. Burrell
Burrell’s
South African Patent and Designs
Law
4th ed (LexisNexis, Durban, 2016)
at
500 (para 9.72.8).
[12]
Burrells
above n 11
at
499 (para 9.72.6).
[13]
Burrells
above n 11
at
500-501 (para 9.72.8) set out the three step enquiry namely:
“
[F]irst,
the scope of the design registration has to be construed with
reference to the definitive statement; secondly, the import
of the
alleged anticipation has to be ascertained; and, thirdly, the design
as registered and properly construed with reference
to the
definitive statement has to be compared with the alleged
anticipation.
The general and the main
principle is that if the comparison reveals that alleged
anticipation and design as registered are subsequently
identical,
then there is no novelty in the design as registered, but if there
is a difference which is more than practically
immaterial, then
there is novelty.
Whether
a design is novel in comparison with a previous design is a matter
of fact to be judged by the eye… It is the general
impression
gathered by the eye that counts and the question for determination
is whether the two appearances, each looked as
the whole are
subsequently different.”
[14]
Section 1(1)
of the
Designs Act 195 of 1993
.
[15]
Emphasis
added.
[16]
Burrells
above n 11
at
466 (para 9.40).
[17]
Designs
Regulations, GN R844
GG
20256,
2 July 1999. Regulation 12(1)(c) reads-
“
12(1)
An application for registration of a design shall be made on Form D1
and shall be accompanied by
the following documents:….
(c)
Form D3, which shall include a declaration by the applicant that he
is the proprietor of the design, and
a power of attorney in the case
where an agent is appointed.
[18]
Section 1
of the
Designs Act 195 of 1993
.
[19]
Zondo
J (as he then was) outlined the concept “in the prescribed
manner” in
MCG
Industries Pty Ltd v Chespak Pty Ltd
[2011] ZAGPPHC 222; BIP 284 (GNP) at paragraph 13-16. This case was
confirmed on appeal in
Chespak
(Pty) Ltd v MCG Industries (Pty) Ltd
[2014] ZAGPPHC 646; 2014 BIP 465 (GP).
[20]
Section
20(1)
of the
Designs Act 195 of 1993
, see also
Clipsal
Australia Pty Ltd v Trust Electrical Wholesalers and Another
[2007]
ZASCA 24
;
2009 (3) SA 292
(SCA);
[2007] 4 All SA 1082
(SCA) at para
4.