This is the second post by guest blogger Jeremy Speres on the Grandmark decision. In this post he considers whether Grandmark is a death knell for aesthetic designs for spare parts and summarises the trade mark aspect of the decision which is important as not all trade mark use is infringing use, it seems.
"This writer would have liked to have seen the court grapple more with the arguments for and against aesthetic design registrations for spare parts, as neatly put by Lodewyk Cilliers here. The arguments raised by Mr Cilliers are supported by Dr Mikhalien du Bois and Prof. Visser, who go on to raise three other issues arising from the High Court decision in an excellent academic article in the SA Mercantile Law Journal.
|ed - Aesthetic Body Parts|
In the High Court, BMW had attempted to argue that their designs were only partly functional and included aesthetic elements that entitled them to registration as aesthetic designs. The High Court rejected this argument, in part because BMW had not distinguished between the specific functional and aesthetic features of its designs. One gets the feeling that both courts could not have so easily dismissed BMW’s argument in this regard if BMW had adopted a more specific definitive statement for its designs. BMW had adopted the so called “omnibus” definitive statement in terms of which the applicant for a design simply lays claim to the shape/configuration/ornamentation/pattern as shown in the representations/drawings accompanying the design application. That is, no specific features are claimed. Definitive statements have been likened to claims in a patent specification and are used to determine whether the design meets the novelty, originality and other inherent requirements, as well as the scope of protection (see Burrells referenced above). Perhaps a more specific definitive statement, carefully identifying the aesthetic features that are claimed by the applicant, presents a potential way for Original Equipment Manufacturers (OEMs) such as BMW to obtain some limited form of protection in their spare parts designs. However, even if faced with a more specific definitive statement, it is difficult to see a later court overcoming the SCA’s reasoning that spare parts are intended to serve the sole purpose of replacing the original parts and are therefore wholly functional and unregistrable as aesthetic designs.
On appeal, BMW persisted with its claim of trade mark infringement, although interestingly it only relied upon one of the five registered marks it originally relied upon before the High Court – specifically the BM mark. The appeal court adopted the same approach it followed in the SWARTLAND decision in determining whether the mark was used “as a trade mark” or “badge of origin”. That is, the court looked to the context in which the mark was used (on the packaging of Grandmark’s components) in making this assessment, finding that a customer would not view the trade mark in isolation. The court held that because the articles in question bore numbering and lettering surrounding the BM mark, and one article contained the wording GORDON AUTO BODY PARTS CO.LTD, the trade mark could not be said to be used as a badge of origin, but was instead used to identify the component concerned (and not the source of the component).
Grandmark is already billing their victory as a win for consumers (and their insurance companies) – see here. BMW has, so far, been quiet – hopefully they aren’t too busy computing price increases necessitated by this judgement!"