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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions