South Africa: BMW And The Art Of Registered Designs

Last Updated: 10 September 2012
Article by Lodewyk Cilliers

In a recent matter heard before the Gauteng North High Court (Bayerische Motoren Werke AG v Grandmark International) BMW AG took on a spare parts manufacturer, Grandmark International, for alleged infringement of their registered designs.  The registered designs related to various parts of a motor vehicle, for example a bonnet, which BMW AG alleged were being infringed by Grandmark.  However, the court found, inter alia, that a part such as a bonnet is a purely functional article, and as such cannot be filed as an aesthetic design.  This judgment sparked debate from various corners, as it has a profound impact on original motor manufactures and replacement part manufactures alike.

A registered design is a form of intellectual property that is generally not well known, and even less clearly understood.  Essentially, the registered design is the lesser known step-brother of its more prominent siblings - patents, trademarks and copyrights – and is the mechanism by which the outward appearance of an article of manufacture is protected.  It may therefore be useful to sketch the backdrop against which the decision should be interpreted.  Keeping with the general subject matter at hand, but steering well clear of the legal jargon, an interesting departure point is to consider the cult-novel written by Robert Pirsig, "Zen and the art of motorcycle maintenance".   In his book, Pirsig differentiates between two kinds of thinkers – classical thinkers and romantic thinkers.  In essence he describes how differently programmed people would perceive the same object – in this case a motorcycle.

First we have the classical thinkers.  They see a motorcycle, and they see a system of concepts worked out in steel.  To them it all boils down to a blueprint of systems, functions and processes, with the appearance of the motorcycle being but a necessary derivative of the collective functionality. This is then typically the domain of patents – the part of IP that focuses on protecting an underlying idea in its broadest form, irrespective of the specific appearance thereof.

Next Pirsig proceeds to examine the romantic thinkers.  A romantic thinker perceives the world in terms of its appearance - it is not bound by the laws of physics, but rather by aesthetic conscience.  The romantic thinker is much more concerned about the emotive reaction triggered by the motorcycle.  He would focus on the appearance, while the internal workings of the engine and the interaction of parts will remain of little concern.  Enter the registered design, and more particularly the aesthetic design – the appearance of an article insofar as it appeals to the eye, and is judged solely by the eye.

One would be inclined to conclude that the difference between patents and designs can therefore crisply be formulated – patents protect underlying concepts whereas registered designs protect appearance.  Although true, this is however an oversimplification, as with all things in life – nothing is absolute.  Sometimes an article may indeed have a particular appearance, but the appearance is necessitated by the function that the article is to perform - those rare cases where form truly and absolutely follows function.  This may, for example, be the case in the design of a gear having teeth that are designed to have a very particular profile in order to mesh with a mating gear, and to exert a force at an exact point of rotation.  The shape, and hence the appearance, is still the predominant feature, but now the shape is necessitated by the function that the gear is to perform.  This is then the territory of the functional design – a further type of registered design used to protect the design applied to an article having features that are necessitated by the function which the article is to perform.  However, this does not mean that any article that fulfills a certain function will be a functional design.  Only if the article absolutely has to look a certain way in order to perform its function will it be in the form of a functional design.  For example, every soft drink bottle has a function – to hold soft drink.  However, a myriad designs exist for bottles that all essentially fulfill the same function.  The aim of the different designs is therefore clearly to appeal to the eye, and as such the designs are protectable by way of aesthetic designs.

To complicate matters further, a specific limitation in the South African Designs Act provides that spare parts are not protectable by way of functional designs.  Therefore, if an article is in the nature of a spare part, one would not be able to file a functional design to protect the appearance of the article.  In addition, if the article includes no other aesthetic features (i.e. the appearance is necessitated solely by the function that the article is to perform), one would also not be able to file an aesthetic design.  In short – such an article will not be capable of being protected by way of a registered design.  

Returning to the case in point, BMW registered a number of aesthetic designs for replacement parts, such as bonnets, grilles and headlight assemblies based on the notion that these parts have both functional and aesthetic aspects.  It was common cause that the functional features could not be protected, but the spare part battle essentially turned on the presence, or lack thereof, of aesthetic features in a replacement part when seen on its own, and not as part of the vehicle in its entirety.  The finding of the court was that spare parts are by their nature functional, because they have only one purpose in life.  In the words of the court "Put another way, a replacement part for an E46 BMW serves only one function and that is to replace a part on that E46 BMW. It has to look the same, it has to fit the same, and it cannot look any other way".

But does it?  Obviously there are two schools of thought.  The manufacturer of the original vehicle may ask a very legitimate question - Why can a replacement part manufacturer not manufacture a bonnet that has an identical periphery to the original part, and which will therefore fit onto the vehicle, whilst having a different surface profile? Arguably there are many potential designs for various spare parts such as bumpers, grilles, and headlamp arrangements. The custom car market has shown that designs for these parts can all be modified without harming the function of the part or the function of the car as a whole – but only changing the appearance.  Whether it improves the appearance of the vehicle is of course in the eye of the beholder.  But be that as it may, practically speaking different designs can be used.  Commercially speaking it may well be suicide. Why? Because the consumer wants a spare part that looks like the "real thing" - which is as aesthetically appealing as the original part.  Many bonnets could conceivably be designed to fit the vehicle, but only the particular appearance of the original part will ensure that the aesthetic harmony remains intact.  It may therefore be suggested that through the eyes of the likely consumer, the bonnet will still have features that, in the words of the Design Act, "appeal to the eye and are judged solely by the eye", and that the court erred in its interpretation and application of the principles of registered designs. Yes – this will result in more money in the pockets of the original vehicle manufacturers, but in an increasingly competitive environment will also play an important part to ensure that the cash flow remains intact for the research and development required to continuously improve the vehicles that many of us so desire.   

The spare parts manufacturers will not sing from the same hymn sheet.  They may in turn argue that the original vehicle manufacturers should not design cars to sell car parts.  They should design car parts in order to sell cars.  They will concede that the appearance of the car is an important factor in the decision to buy the car and may even admit that it is also an important factor in the repair decision, but for a different reason.  The may argue that the original manufacturer has already made its profit on the sale of the car, but the consumer is now locked in to buying spare parts from it as well because, even if possible, your average consumer would prefer a replacement part that fits in with the remainder of the vehicle design, and which does not stick out like a sore thumb.  Understandably it may evoke negative reactions, but this is then a philosophical debate and not a question of law.

This is clearly a discussion that can turn the automotive world into an emotive warzone where vision is often obscured by the dust in the arena.  However, BMW AG has lodged an appeal to the decision, and in the end it will hopefully be up to the Appeal Court to give everybody a clear and final answer to this contentious question.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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