Design Protection for Chinese Utility Models

By Herman van Schalkwyk, Spoor & Fisher,[Patent]

Utility models are used extensively in China to protect the shape, structure or the combination of shape and structure of a product which is fit for practical use. Chinese inventors often look towards utility models as a method of getting quick and cost effective protection for their inventions in China but this option is not always available. Although utility models are very successful in China, many countries, such as South Africa, do not specifically provide for the filing of utility models. This, however, does not necessarily mean that the owners of Chinese utility models cannot get protection for their products in South Africa.
South African design law is unique in that it allows for the filing of both aesthetic and functional design applications. Aesthetic designs are well known across the world, seeing that most countries allow for the registration of a design if the features there of are aesthetic in nature. In South African design law, an aesthetic design means any design applied to any article, whether for the pattern, shape, 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. However, functional designs are largely unknown outside of South Africa as they are excluded from being registered as designs in most countries. In terms of South African design law, a functional design means 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 is to perform. It is important to note that a functional design does not protect the underlying inventive concept of an invention but rather the appearance of an article having features which are necessitated by the function which the article is to perform. A good example of a functional design is the design of a gear, the tooth profile of which must look a certain way in order for a set of gears to mesh.
Comparing the subject matter which is protectable by way of a Chinese utility model with that which is protectable by way of a South African functional design, there appears to be substantial overlapped between them.
It therefore follows naturally that the subject matter of a Chinese utility model could possibly be protected in South Africa by way of a functional design registration. The next question that is of significance to an owner of a Chinese utility model is whether a South
African functional design could be based on, i.e. claim priority from a Chinese utility model. The answer can be found in the Paris Convention for the Protection of Industrial Property, to which both China and South Africa are signatories. The Paris Convention, in short, allows the owner of an application for a patent, utility model, design or trade mark to file foreign applications and get the benefit of the filing date of the first application in his/her home country. Article 4 E (1) of the Paris Convention is of significance as it states that, “where an industrial design is filed in any country by virtue of a right to priority based on the filing utility model, the period of priority shall be the same as that fixed for industrial designs.” From Article 4 E (1) it is clear that a Chinese utility model can form the basis of a functional design registration in South Africa provided that the functional design application is filed within six months from the filing date of the Chinese utility model. Also, in terms of Section 44 of the South African Designs Act an application for the registration of a design in South Africa may claim priority from “an application for the registration of a design or similar right” in another country belonging to the Paris Convention. In light of what is said above, a Chinese utility model could be argued to be a similar right to a South African functional design registration, which enforces the notion that utility model owners could get protection for their products by way of a functional design in South Africa. 
It is believed that a South African functional design registration could be of real value to the owner of a Chinese utility model who is looking to get protection in South Africa. A functional design registration not only allows a much faster registration and, accordingly, a shorter waiting period to obtain enforceable rights against potential infringers when compared to patents, but also provides a more cost effective method of obtaining IP protection for a product. Functional design protection should therefore not be ignored by the owners of Chinese utility models who are looking to expand into South Africa.

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