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!"
