The Design Indaba Expo that Capetonians flocked to over the period 2- 4 March 2012 showed that product design is alive and well in South Africa, although - somewhat predictably in a low-tech economy - all the action appears to be in "soft" areas like clothing, jewellery and furnishings: not a single car, cell phone or TV - sexy or gross - was to be seen. The Expo did put a rare spotlight on the legal protection available to product shapes. The easiest and most obvious form of protection for product shape is that poor, neglected stepchild of IP, the registered design - not a lot of people know this, but it's possible (cheap and easy too!) to get a design registration for a product shape that's new (as in novel), and this gives the owner monopoly protection for 15 years in the case of an aesthetic design, and 10 years in the case of a functional design.

Even fewer people know that it's also possible to protect a product shape through a trade mark registration, but only if it's non-functional. In this case, the shape does not need to be new, but it must be distinctive. What this means in practice is that you must be able to establish that your product shape's been around a bit, that it's become synonymous with your business, and that people have come to regard it as an indicator of source. For trade marked product shapes think Mini Cooper, Toblerone or Jeep Grill. A trade mark registration can, of course, be renewed indefinitely. So what to do? If your design's brand new, it's a no-brainer, you go for a design registration. If your design's old hat but synonymous with your business, try the trade mark route. If your design's neither new nor well established, you deserve what you'll get - nothing. But what do designing men and women do? Well these smart people:

  • Get a design registration for their new design;
  • They enjoy the 15-year monopoly protection period, and use that period to establish the product, highlighting in their marketing material that the shape is key;
  • They then get a trade mark registration for the now well-established and recognised shape, allowing them to create a perpetual monopoly. Nice!

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