Developing IP in South Africa
Have there been any recent trends in the design filings department you have noticed in the past few years?
Design filings in South Africa were steadily increasing up to 2013, after which filing numbers dropped and have not yet been able to reach pre-2013 figures.
A drop of almost 14 % in the design applications filed between 2013 and 2014 was most likely due to a judgment delivered by our Supreme Court of Appeal in BMW vs Grandmark International (Pty) Ltd on 18 September 2013.
South Africa has an active automotive manufacturing industry for right-hand drive vehicles. In order to protect this industry, automotive manufacturers routinely filed design applications for new vehicle designs as a whole as well as for several of their individual parts such as, for example, bonnets, rear view mirrors and headlights.
Our Designs Act allows the filing of aesthetic designs (providing protection for features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof) as well as functional designs (providing protection for features which are necessitated by the function which the article to which the design is applied, is to perform).
Our Act specifically excludes functional design protection for an article which is in the nature of a spare part for a machine, vehicle or equipment.
It accordingly became accepted practice amongst IP practitioners to file aesthetic design applications for spare parts.
In the abovementioned case, BMW sued Grandmark for infringement of aesthetic design registrations filed for several BMW spare parts. Amongst other defences, Grandmark contended that spare parts have no aesthetic features and should therefore not have been registered as aesthetic designs.
On appeal, our Supreme Court agreed with Grandmark’s view that spare parts are not selected for their aesthetic appeal. They are selected so as to act as a replacement for a damaged part and selection based on aesthetic qualities does not come into play as spare parts are not interchangeable between vehicles or vehicle models. The actual customer (the vehicle owner) in fact does not have any choice as to which spare part is used when he sends his vehicle in for repairs. The BMW design registrations were revoked.
As the judgment has to date not been challenged, spare parts are currently not registrable as designs in South Africa. This has led to several manufacturers no longer filing design applications for spare parts in South Africa, whereas others have taken a more optimistic view and are filing anyway, perhaps in the hope of one day having the judgment overturned.
How have you seen the pharmaceutical industry develop in South Africa? How do you think your country is guiding the way in patents in this industry?
South Africa does not have a pool of pharmaceutical companies that develop original pharmaceutical products, but several large multinationals have manufacturing facilities here. Patent filings for pharmaceutical products and productions methods form a large part of overall filings.
As South Africa is currently a non-examining country (there are plans to start examining at least pharma patents), the number of pharma patents granted here are higher than in countries having a similar socio-economic background and in which patents are examined.
Based on our Bill Rights which provides that “the state must take reasonable legislative and other measures, within its available resources, to achieve the progressive realisation of the right to have access to health care services”, our Department of Trade and Industry has developed a draft IP Policy which intends to initiate the amendment of several IP laws, amongst which is our Patents Act.
The aim of the Policy is to: improve access to medicines by making it more difficult for pharmaceutical companies to obtain patents and keep prices high by introducing an examination process for patents, and also by seeking to prevent “evergreening” which acts as a barrier to the entry of generic medicines. Many aspects of the Policy are vague and unrealistic and have therefore attracted widespread criticism from IP professionals as well as originator companies.
Propaganda supporting the IP Policy claiming that resistance against it by pharmaceutical companies is tantamount to genocide has been prevalent and met by public support. Pharma companies have been labelled as villains, seeking to prevent patients having access to affordable life-saving medicine.
These companies (rightfully) claim that the problem does not lie with patents, but with South Africa’s sub-standard health policy, lack in service delivery, lack of education and poverty. Attracting capital and therefore raising the country’s wealth rather than driving away investors by attempting to implement non-sensical policies should be the way forward.
The draft IP Policy has to date not been implemented as far as our Patents Acts is concerned. Although examiners have allegedly been in training since 2015, our Patent Office does not yet examine patent applications substantively and we do not expect examination to implemented in the near future.
Claudia Berndt
Director
Hahn & Hahn
222 Richard Street
Hatfield, 0083
South Africa
General e-mail: hahn@hahn.co.za
My e-mail: claudia@hahn.co.za
My name is Claudia Berndt and I am a Director at Hahn & Hahn which has its head office in Pretoria, South Africa. My background is in Chemical Engineering and I joined the firm in 1999. I deal with design filings in South Africa and abroad, Paris Convention patent applications to be filed in South Africa, as well as drafting, filing and prosecuting patent applications for local clients locally and abroad.
Hahn & Hahn was founded in 1951 and has steadily expanded ever since. We deal with the filing of PCT National Phase patent applications, litigious matters involving patent, trade mark, design and copyright infringement, as well as drafting and prosecuting patents for our local clients.
