When it comes to intellectual property (IP), patents, trade marks, and copyright often take centre stage. Yet, a registered design can also be a powerful tool in South Africa. A recent judgment in Balser Jan Nienhuis v Africo Solar (Pty) Ltd has brought this into sharp focus, reminding entrepreneurs that design protection can be decisive in safeguarding innovation, deterring copycats, and securing market advantage.
The Case at a Glance
The dispute centred on the applicant’s registered designs for brackets used to mount solar panels on various roof types. The respondent marketed brackets that were virtually identical to the registered designs but contended that, since the brackets could also be used for unrelated purposes - such as shelving or lighting fixtures - they fell outside the class in which the designs were registered and therefore did not constitute an infringement.
In its reasoning, the court reaffirmed that:
- a registered design grants the owner the exclusive right to prevent others from 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 it; and
- the question is not whether the competing product is identical, but whether it is substantially different in the eyes of the user.
Ultimately, the court sided with the design holder, granting relief that underscored the commercial value of securing and enforcing design rights.
Why This Matters for South African Businesses
This case delivers several important lessons for businesses across industries:
1. Designs Are Strategic Business Assets
Registered designs are far more than an administrative formality. They are commercial assets that can create exclusivity in crowded markets where product appearance or configuration drives customer decisions.
2. Fast and Cost-Effective Protection
Registered designs are generally quicker and more affordable than patents. For businesses in fields such as furniture, packaging, clothing, vehicles, and consumer goods, this makes them an attractive and practical form of IP protection.
3. A Strong Deterrent Against Copycats
The court’s willingness to enforce registered designs sends a clear message: imitators cannot simply make minor tweaks to escape liability. A well-drafted design registration can be a proverbial shield and sword against competitors who try to free-ride on your innovations.
4. Part of a Balanced IP Portfolio
Registered designs complement other forms of IP: trade marks protect your brand, patents protect technical innovations, copyright protects original works, and registered designs protect visual features or articles. Together, they can create robust IP protection for your business.
The Bottom Line
South Africa’s innovation economy depends on protecting the creativity and investment of its entrepreneurs and businesses. Yet too often, they neglect to file design applications - only to face competitors who copy their products with little recourse. We have seen time and again how strategically filed designs can tip the balance between commercial success and costly disputes. If your product has a unique look or shape that sets it apart, don’t wait until it’s copied - protect it now. Contact our patent and design team at info@kisch-ip.com to discuss how we can secure your competitive edge.
