South Africa: design protection for car spares (or not)

Reading a case about protection of designs for car spares takes me back to the days of my youth. There haven't  been enough since BL v Armstrong. But you have to go quite a long way to find them these days: this one comes from South Africa, whose Designs Act no 195 of 1993 (available here, from the Japan Patent Office, oddly enough) is another exercise in nostalgia: there are many phrases that bring back fond memories of the original version of the Registered Designs Act 1949, on which presumably it was based. One important thing about the South African Act, though, is that it protects both aesthetic and functional designs, with different criteria for protection of the two categories. The requirements for protection of functional designs will also ring bells for readers familiar with Part III of the Copyright, Designs and Patents Act 1988 (and who isn't?). It's a real trip down memory lane. The most significant thing is that there is an exclusion from protection for functional designs where the article is a spare part (section 14(6)).

Like us, the South Africans have been wrestling with the problem of intellectual property protection for spare parts for some time: three decades, according to the AfroIP blog, starting with a boat-building case called Schultz v Butt 1986 (3) SA 667 (A) in which the defendant used a hull made by the complainant to make a mould from which to make hulls which it then sold in competition with the design owner, a case which might be considered to be rather clear-cut. The most recent case dates from 25th ultimo.

That case is BMW AG v Grandmark International (Pty) Ltd and another [2012] ZAGPPHC 139 and the judgment of the North Gauteng High Court, Pretoria, should you wish to read it in all its glory, is available from the South African Legal Information Institution, the equivalent of BAILII, here. There's a claim that the defendant was in contempt of an earlier court order, plus claims of registered design infringement and trade mark infringement. It's the design claim that's interesting, as the contempt case seems to have gone off at half cock and the trade mark case was defeated, ironically, by earlier cases in which BMW was the claimant.

Four registered design for the model known by its BMW code as the E46 but better known as the 3 Series (fourth generation, 1998-2005) were involved. This model was assembled in eight places around the world in addition to Munich, including a site in South Africa, where BMW has been the favourite premium brand of car for some time: in 2012 it held 7.9 per cent of the overall market, 33.9 per cent of the premium segment, so there's a significant parc of BMWs needing spares.

The registrations were for aesthetic designs, namely a bonnet, headlight, grill and fender [sic]. Surprisingly, the court took the view that the designs were in fact functional, and that they had been craftily registered as aesthetic designs just to circumvent section 14(6). How could that be? The court applied what a scholar of our 1988 Act would recognise as a "must-fit" and "must-match" analysis, and concluded that the designs all served a specific purpose – they had to look and fit a certain way to serve their purpose. The Act defines a functional design as one ""having features which are necessitated by the function which the article to which the design is applied, is to perform" - language more related to the concept in our law of "dictated solely by function" than the "must-fit" and "must-match" exceptions. I don't find it very convincing - but not being a South African lawyer, what I think probably doesn't count for a lot.

Moreover, the court decided that the designs failed the novelty test applicable to aesthetic designs, because they were anticipated by previous designs for BMW body parts. They were nothing more than developments of previous BMW body part shapes. That approach could deprive the vast majority of designs for spare parts, especially visible ones, of protection. But it sounds as if there will be an appeal - there almost has to be, given what's at stake - so perhaps we'll learn in due course that this is not in fact what the law means. Still, a very interesting case for design enthusiasts!

Oh no! Belgian copyright law protects car spares

In the UK, copyright has been largely excluded from the field of design protection, but elsewhere it still plays an important part. The Benelux legal firm, Nauta Dutilh, reports that they recently acted in a copyright claim for two large French auto makers (I wonder who?) against the distributors of non-original car body parts. There's no special protection in Belgian copyright law for spare parts: like our copyright law used to do in the bad old days, it protects car parts only indirectly, by giving protection to the underlying artistic works.

The Court of Appeal in Mons, Belgium, confirmed that the parts in question (which were all visible parts) each have their own original character. The court reckoned that the parts’ functions could be achieved using designs very different from those which were actually used. The car makers 

had adopted at the end of a creative process, in the course of which choices were made based not only on technical constraints such as aerodynamics, interior space and visibility (....) but also for the purpose of contributing to the general aesthetics of the vehicle in which the parts are used. The choices that were made go beyond know-how. Individually, the parts, which make up one component of a complex whole, are the result of intellectual effort by their designer and represent a subjective, aesthetic choice from amongst numerous possibilities.

At this point, it's worth mentioning that the parts concerned were all visible ones, which is some relief.

Although the parts did not bear the car marker’s mark, because they are integrated into vehicles sold under these marks and they appear in the car makers' catalogues the law presumes that the rights belong to the car maker. That's an interesting proposition to an English lawyer, though it's presumably likely that unregistered design right here would belong to the car maker as commissioner of the design.

Although the UK has no copyright worth speaking of for spare parts designs, the Directive preserves the principle of cumulation. Article 17 says:

A design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection under the law of copyright of that State as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State.

That doesn't require Member States to give copyright protection at all, let alone on even slightly harmonised terms, but leaves open the distinctly non-Communitaire possibility of giving whatever protection might seem appropriate.