In BMW v Grandmark International 2014 (1) SA 323 (SCA), the Supreme Court of Appeal found BMW’s registered designs for vehicle spare parts to be invalid. The designs in question were for a bonnet, a grille, a headlight assembly and a front fender. The court held that the design of these parts did not qualify as aesthetic designs because consumers select them solely to perform the “function” of replacing the original with an exact match. According to the SCA, aesthetic designs must be “those that invite customer selection – and customer discrimination between articles – solely by their visual appeal”. The court found the designs to be purely functional and, therefore, incapable of protection as aesthetic designs.
In South Africa, designs can be filed as either aesthetic designs or functional designs. An aesthetic design has “features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof”, and a functional design has “features which are necessitated by the function of the article to which the design is to be applied, is to perform”. Section 14(6) of the Designs Act excludes from the protection of a registered functional design any feature of pattern, shape or configuration of an article that is in the nature of a spare part for a machine, vehicle or equipment. So functional design protection would not have been available for BMW’s spare parts either.
An almost identical case came before the United States Court of Appeals for the Federal Circuit in Automotive Body Parts Ass’n v. Ford Global Techs. (Fed. Cir. 2019), with the opposite outcome. Ford held two registered designs (called design patents in the USA) for the hood (bonnet) and headlamp of its popular F150 truck (bakkie) and sought to enforce these against the Automotive Body Parts Association (ABPA). ABPA adopted the same argument as Grandmark: anyone wanting to replace a Ford F150 bonnet or headlamp will want a replacement part that matches the original. The court summarised this as, “[ABPA] argues that Ford’s hood and headlamp designs are functional because they aesthetically match the F-150 truck.” The Federal Circuit rejected this theory of functionality, holding that: “the aesthetic appeal of a design to consumers is inadequate to render that design functional” – “even in this context of a consumer preference for a particular design to match other parts of a whole”.
In the USA, a design patent must be directed to an “ornamental design for an article of manufacture” and not one “dictated by function”, which is similar to the requirements for an aesthetic design in South Africa. Although the article of manufacture may be functional, the design itself may not be primarily functional. In deciding whether a design is primarily functional, the Federal Circuit applied a test that asks whether the design is “essential to the use of the article”. Other factors to be considered are: i) whether the protected design represents the best design; ii) whether alternative designs would adversely affect the utility of the article; iii) whether there are any utility patents directed at the design features; iv) whether the product’s advertising touts particular features of the design as having specific utility; and v) whether there are any elements in the design or an overall appearance clearly not dictated by function.
By framing ABPA’s argument as the design having an aesthetic appeal that includes a requirement to aesthetically match, the court easily found in favour of Ford by holding that market advantage through aesthetic appeal is the exact type of market advantage that design patents are supposed to provide. The court said the following: “Automotive Body Parts Association (ABPA) asks us to hold that the aesthetic appeal – rather than any mechanical or utilitarian aspect – of a patented design may render it functional … We decline ABPA’s invitation”. The SCA in Grandmark, however, found that consumers would not even consider aesthetic appeal at all. Our Court said: “The articles embodying the designs are not selected by customers for their appeal to the eye. They are selected solely for the function they perform – which is to replace components so as to restore the vehicle to its original form”.
This framing is important as it led the respective courts to different outcomes. The ABPA in the Ford case may also not have had proper evidence for all of its contentions. Consider, for example, the following extract: “ABPA declares that customers care about design in the initial sales market, but not when they select replacement parts. But ABPA cites no supporting facts. Instead, it ignores abundant record evidence regarding performance parts available as replacements for customers who ‘want [their vehicles] to look better’”.
Design protection remains available in South Africa for an entire vehicle, for custom parts such as non-standard performance parts, and possibly for interchangeable parts that are used across multiple vehicle types (e.g. wing mirrors, wheels, seats and steering wheels). But unlike in the USA where spare parts can be protected by designs as long as the design of the part is not essential to its use, in South Africa standard, non-interchangeable spare parts are considered as purely functional and incapable of design protection.
View this article in Without Prejudice here.
By Ralph van Niekerk, Patent Attorney