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.