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Thursday 3 October 2013

South Africa: Appeal court confirms - no design protection for spares

In August last year, the Motor Law blog reportedthe first instance judgment in BMW v Grandmark, a case before the North Gauteng High Court, Pretoria. Ranchod J held that there was no infringement of BMW’s registered designs for certain spare parts (all being for external components of the 3 series, which were claimed to e ‘aesthetic’), nor was there trade mark infringement. Now the Supreme Court of Appeal has rejected BMW’s appeal.
The designs concerned did not meet the requirements for registration as aesthetic designs because, while the appearance of the car itself was no doubt an important factor in attracting customers, when they came to buy replacement parts they were not interested in the aesthetics of the article. All that mattered was whether it would do the job.
The trade mark point concerned the use of the letters ‘BM’ in parts numbers printed on the packaging. BM was a registered trade mark of the manufacturer, but the court held that there was no infringement because that use of the letters was not ‘trade mark use’. Trade marks function as badges of origin, and in the context of a parts number it would not be regarded by a customer as an indication of origin. In a thoroughly commonsense judgment, Nugent JA went on to say that the fact that a different origin was clearly indicated ensured that there was absolutely no danger of the letters being taken as indicating that BMW had made the components.
However, some commentators believe that the outcome of the design case goes against the spirit, but not the letter, of the law. They expect a further appeal.
Bayerische Motoren Werker Aktiengesellschaft v Grandmark International (Pty) Ltd and Another (722/12) [2013] ZASCA 114 (18 September 2013) and see the Afro IP blog here.

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