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DESIgN INSTITuTE

Y ide t

inte e t a p pe ty i tsin S t A i aA e y a desi ne ? D y kn w ab t desi n e ist ati n?A e y an invent ? D y kn w ab t patent e ist ati n?A e y a p d t man a t e ? D y kn w ab t p d t

iabi ity? A e y an a t , en inee in d a tsman a mp te

p amme ? D y kn w ab t py i t? D y kn w t ep esses t w? D y kn w w an s pp t y ? havey nside ed t e e p ayed by standa ds in y desi n?



INTEllEcTuAl ProPErTY rIghTS

Inventors and designers whose business it is to

generate intellectual property should acquaint them-selves with the legal aspects of protecting what is

rightfully theirs

Your guIDE To INTEllEcTuAlProPErTY rIghTS IN SouTh AfrIcA

Edited and published by the SABS Design Institute.

c nt ib te s:

— Intellectual property law information researched

and revised by AJS Dunlop, SA Institute of Intel-

lectual Property Law (SAIIPL)

— Standards and design submitted by Geoff Visser,

Standards South Africa, SABS

— The product development process submitted by

Neels Babst, CSIR

— Acknowledgement of input from CIPRO

SABS Desi n Instit te:

— Adrienne Viljoen, Manager

— Esmé Kruger, Design Information

— Zenobia Norval, Awards Coordinator

— Bongani Ntombela, Design for Development

— Portia Mposula, Project Assistant

— Vuyiswa Daniel, Design Secretariat

SABS Design Institute

Private Bag X191

PRETORIA

0001

DISclAIMEr

ISBN 978-0-626-21033-5

© Copyright reserved. No part of this publication

may be reproduced without the prior permission

of the SABS Design Institute.

This booklet is based on information available in

2008 but should not be treated as a substitute for

detailed advice from a professional legal advisor.

It is published without responsibility on the part of the Design Institute, which cannot accept account-

ability for the consequences of anyone acting on

the information contained herein.

Tel: 012 428 6326

Fax: 012 428 6546

E-mail: [email protected]

www.designinstitute.org.za



1

Contents

2 IntRoDUCtIon

4 PRoteCtInG soUtH AFRICAn InteLLeCtUAL PRoPeRtY

4 Copyright

6 Design registration

10 Patents

15 Trademarks

18 Counterfeit goods

19 Protection by other laws

19 Protection elsewhere

20 Licences, assignments and other agreements

21 Product liability

22 Valuation of intellectual property

22 Income tax implications

23 Intellectual property acts and treaties

24 tHe PRoDUCt DeVeLoPMent PRoCess

24 Enterprise creation

26 stAnDARDs AnD DesIGn

InseRt: UseFUL ADDResses FoR tHe InVentoR AnD DesIGneR

InseRt: DesIGn PRoteCtIon At A GLAnCe



2

IntRoDUCtIon

What is the de nition of intellectual property?

The following de nition comes from the Web. The

general term for intangible property rights which are

a result of intellectual effort. Patents, trademarks,

designs and copyright are the main intellectual prop-erty rights. — www.patent.gov.uk/design/glossary/

The use of intellectual property rights in the globalmarketplace is a major facet of business today. The

leaders in exploiting this source of wealth are prob-ably the USA and South Africans are fast learningto enter the game.

Your inventive ideas, works and product designs,

whether aesthetic or functional in nature, constituteintellectual property. The value of intangible assets

should not be underestimated – but they must beprotected by law. How often has the inventor not

made a cent, while those who followed him made afortune from his invention? It is essential that legal

protection be obtained to ensure that you, the crea-tor of the design and the investor who nances

development of the design will derive the full com -mercial bene t of the design.

Legal protection of intellectual property ensuresthat exclusive rights are captured, which may be

the only power which you can exert against power-ful corporations. Conversely, they may be the prime

value that you can sell or licence to powerful cor -porations. Even powerful corporations need to be

able to prevent unauthorised use and resist power -ful competition.

Your new product design may entail features thatqualify for protection under one or more of the four major elds of law that govern intellectual prop -erty in South Africa and abroad. The provisions of

these may overlap to cover different aspects of the

same article or product and while there are differ-ences of detail in foreign countries, the broad prin-ciples are the same. Taken together, the different

laws and international agreements provide a system

of design protection. In addition, your design may

Designing a new product can be highly exciting, but the designer should recognise that

there are many pitfalls involved. What process do you have to follow, can someone take the

design that is rightfully yours, what standards regulate your design? All of these questions

will be addressed in this booklet. Just remember that this is only a guideline – it is always

better to discuss legal protection of your design or invention with a intellectual property

rights lawyer who will guide you in this regard .



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also form the subject for protection against passing-

off or unlawful competition, in accordance with the

common law in some countries.

In South Africa, the intellectual property division of

CIPRO, the Companies and Intellectual Property

Registration Of ce, is responsible for the registra -

tion of patents, trademarks, designs and copyright.

The division keeps records of all patents, trade -

marks, designs and copyright that are lodged in

South Africa, including details of the owners/pro -

prietors. CIPRO came about after a merger between

the former South African Companies RegistrationOf ce (SACRO) and the South African Patents and

Trade Marks Of ce (SAPTO).

Researchers and inventors can do searches at

CIPRO’s Paper Based Disclosure Centre. Appli -

cation forms for the different kinds of protection

are available at these of ces or can be requested

from CIPRO by mail or telephone. These can

also be downloaded from the CIPRO website at

www.cipro.gov.za.

In this publication the different elds of law that

you may use to protect your new product designs

will be considered separately, in outline. While every

effort has been made to ensure that information is

correct, no responsibility can be accepted for errors

or their consequences. Also, it is not possible to

deal with the many laws fully and it is essential that

you consult an expert for details.

A short and simpli ed overview of the product devel -opment process has also been included, as well as

explanation of the role of standards in the design

process.



4

CoPYRIGHt

The Berne Copyright Convention covers most coun -tries of the world, including South Africa and laysdown basic principles of copyright law that all mem-ber countries have to comply with. The discussion

that follows focuses on the law in South Africa, butmany aspects are also valid in foreign countries,

broadly speaking Berne extends your copyrightsinternationally. However, make a point of consulting

an expert!

What does copyright protect?

The following works, if they are original, qualify for copyright: Literary works, musical works, artisticworks, cinematograph lms, sound recordings,

broadcasts, programme-carrying signals, publishededitions and computer programs.

The category of copyright works most relevant for

product design will be artistic works. ‘Artistic work’

is de ned to include drawings (including drawings

of a technical nature or any diagram, map chart or plan), paintings, sculptures, engravings and photo -graphs, all irrespective of their artistic quality; works

of architecture; and works of craftsmanship (includ -ing works of artistic craftsmanship as well as worksof craftsmanship of a technical nature). ‘Drawings’

would thus include engineering and industrial de-sign drawings. The concept ‘works of craftsman -ship’ would include three-dimensional articles, for example prototypes and models prepared in thecourse of design work.

In the case of your artistic works, a person who

makes a three-dimensional reproduction (eg in theform of a usable article) of your two-dimensional

artistic work such as a drawing, infringes your copy-right in that drawing. This may also include the

making of a two-dimensional reproduction of your three-dimensional work.

It is important to remember that copyright does notprotect the underlying concepts of a design, onlythe particular rendition of it, which you have re -duced to material form (including in a computer).

Who is protected by copyright?

You, the author or creator of a copyright work willusually become the rst owner of the copyright in

the work, unless you were in employment under acontract of service or apprenticeship, in which case

your employer becomes the owner. (But see further

below “Who owns Copyright“.)

Copyright can be assigned (ie transferred) or li -censed, but an assignment and an exclusive licence

have to be in writing.

How does copyright protect you?

Copyright arises automatically when a work is made,in all Berne Convention countries.

Copyright protection affords you, the copyright own-er the right, generally speaking, to prevent others

from making a reproduction (or copy) of the copy -right work, from publishing the work, and, in some

PRoteCtInG soUtH AFRICAn InteLLeCtUAL PRoPeRtY



5

instances, from offering it for hire by way of trade.

A person who carries out any of these acts withoutyour authority commits an act of direct infringement

of your copyright in the work. To constitute a directinfringement of copyright, actual copying must have

taken place, and the reproduction must be substan-tially similar to the original work.

The protection afforded you also extends to so-called acts of indirect infringement, which will occur where a person deals in certain ways with copies of

a copyright work, knowing that they are infringingcopies. These ways include importing, selling or

dealing in the infringing copies or acquiring a com-puter program.

Copyright law protects the reputation and identityof the author, by giving a right of action against

distortion or mutilation of the work in a way which

is to the detriment of the honour or reputation of the author. This applies, even if the ownership of the

copyright resides in another person or company.

This protection of the author can not be taken fromhim or her.

Are there any exceptions to copyright protection?

In the usual course of events, it will also be an in -fringement of the copyright in a work if a reproduc-tion of another reproduction of the work is made.

However, important exceptions apply to spare parts

throughout the world and in South Africa three-dimensional products placed in the market byauthority of the copyright owner and which areprimarily utilitarian and have been made by an

industrial process, are excluded from copyright.

Copying these does not infringe copyright in theoriginal work, but taking legal advice beforehand

is well advisable because this area of copyright law

is controversial and very complex.

A general exception is research or private study or

personal use and fair review or criticism or reporting

of current events.

Who owns the copyright?

As mentioned above, the author is the owner, unlessemployed in a contract of service or apprenticeship.

Where the employer is the proprietor of a news -paper or magazine, the proprietor owns copyright

only for purposes of publication.

For works created between January 1, 1979 and

May 23, 1980, these exceptions do not apply inSouth Africa, unless the work was done for the stateor an international organisation.

Another exception is where certain copyright works(namely photographs, painted or drawn portraits,

lms, sound recordings and gravures) are made on

commission and on payment of money, in whichcase the person who commissioned the work be-comes the owner of the copyright.

The effect of these exceptions as to ownershipcan be changed by agreement in writing betweenthe parties concerned, i.e. assignment.



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How long does copyright protect you?

Copyright is immediate and for artistic works (ex -

cept for photographs), copyright endures for theentire lifetime of the author and for a period of 50years after his death. In the case of photographs

(also cine lms and computer programs), the period

of copyright is 50 years after the work is rst law -fully made available to the public.

What will copyright protection cost you?

There is no registration fee, since copyright arisesautomatically by law, this is a ground principle of the Berne Convention. However, some countries

(eg USA) allow an optional registration, to help prove

and enforce your copyright there. Only lm copy -right can be registered in South Africa.

What are the registration requirements for copyright?

No prior registration or any other formality is re-quired (besides preferably having the date, your

name and a copyright statement (eg Copyright

reserved) witnessed on your original copy). You

can have that copy authenticated by a notary or

commissioner of oaths. As mentioned optional

registration is available in some countries.

What countries are covered by copyright

protection?

The list of Berne Convention countries is obtain -

able from the Government Printer, or consult a

specialist lawyer. The few non-Berne Convention

countries may well have copyright law available

to you, but you would have to investigate.

Tips and comments on copyright protection

If you forget to register your design, then copyrightmay save the day if you habitually keep all original

drawings, date them and have them witnessed

and have the copyright symbol and notice on all

drawings.

It is preferable to use the copyright warning notice.

The abbreviated form is the year of rst publication

of the work followed by the encircled ©, and thename of the copyright owner. Very often the words

“ALL RIGHTS RESERVED” are added to the notice

(this is actually required in most South American

countries).

When subcontracting work, check that the terms

of the contract provide in writing that you, as the

commissioner become the copyright owner or areacknowledged as the existing owner.

DesIGn ReGIstRAtIon

Design law varies somewhat from country to coun -try, but the key feature common to all, is that reg-istration is essential before you have the right and

the design must be new when you register. The

Paris Convention allows you to register in further

countries up to 6 months after the basic registra-tion in your home country (or a rst registration

anywhere).



7

What does design registration protect?

Whereas original and innovative design may be

protected under the copyright, patent and trademarklaws, a specialised law for design protection isdiscussed here.

Aesthetic and functional design

Although good design usually inherently blends bothaesthetic (eye appeal) design and functional (eg

ergonomic) design in the product, the law in SouthAfrica grants separate protection and different pro-tection periods to aesthetic and functional featuresof designs and requires different conditions to bemet before giving protection (see below). In some

foreign countries functional design cannot be pro-tected by a specialised law for design, but whereit is, it goes under different names, such as “ge-brauchsmuster” – Germany, “utility model” – France,

“Petty patent” – formerly in Australia, now substituted

by a new law for “minor inventions”. Aesthetic design

is protected almost in all countries and in somethe distinction between functional and aestheticdesign is not so strictly drawn. Expert advice will be

essential. In South Africa the register of designs has

two parts, part A for protection of aesthetic featuresof designs and part B for protection of functionalfeatures of designs. Many designs are accordingly

registered in both parts A and B. Designs registered

before 1 May 1995 are only in part A because partB was only introduced after this date.

The categories of registered design protection

An aesthetic design registration protects the fea-tures of appearance of an article, ie the features

of shape or con guration or pattern or ornamen -tation (or any combination of these), which appeal

to and are judged by the eye, as shown in drawingsor photographs of the registration.

A functional design registration protects the fea-tures of an article, which are necessitated by thefunction which the article has to perform. These

features are pattern, shape and con guration.

Integrated circuit topography and mask works areincluded in the category of functional designs in

South Africa. In a number of foreign countries (egUSA and Japan) there is specialised integrated

circuit and mask work legislation. An integrated

circuit is de ned as an article in a nal or an inter -mediate form containing electrical, electromagneticor optical elements and circuitry, which is capableof performing an electrical or an optical function, andin which at least part of the electrical, electromag-

netic or optical elements and circuitry are integrallyformed, in accordance with a predetermined topog-raphy in a semi-conductor material. An integrated

circuit topography consists of the pattern, shape of con guration of the three-dimensional disposition

of the electrical, electromagnetic or optical elementsand circuitry in an integrated circuit.

A mask work consists of a pattern of an image how-ever xed or encoded, having or representing at

least part of an integrated circuit.

Who is protected by design registration?

You, the owner of a registered design may applyfor the monopoly right, or a person or companyfor whom you made it in the course and scope of your employment, or to whom you assign it.



8

How does design registration protect you?

You have a monopoly right to prevent others from

making, importing, using or disposing of in SouthAfrica an article which falls within the class in whicha design is registered, incorporating the design or a design not substantially different. It is not neces -sary that the owner of the design prove that the

infringer had actually copied his design.

You must enforce your right through an appropriateSouth African Court. An attorney, patent attorney or

agent or advocate can represent you. In foreign

countries the foreign courts and lawyers must beused.

Relief can be by way of an interdict, either damagesor a reasonable royalty in lieu of damages and sur-render of any infringing product or article or of anyproduct of which the infringing product forms aninseparable part.

What are the conditions for a valid design

registration?

An aesthetic design has to be new and originalwhereas a functional design has to be new and notcommonplace in the art in question. A design is

new if it does not form part of the state of the artimmediately before the date of application for theregistration or the release date, whichever is the

earlier. Where the release date is the earlier, the

application for the registration thereof must belodged within six months of the release date. The

release date is the date on which the design wasrst made available to the public with the consent

of the proprietor or his predecessor.

The state of the art comprises all matter available

to the public (whether in South Africa or elsewhere)

by written description, by use or in any other wayas well as matter from prior pending or convention

applications.

Both aesthetic and functional features of a singledesign applied to an article may be protected byseparate design registrations.

Are there any exceptions to design registration?

An article which is in the nature of a spare part for machine, vehicle or equipment shall not be the sub -

ject of a valid registration for a functional design

but it may be the subject of an aesthetic design.

As mentioned, the rules for design law in foreigncountries are different and complex.

Design protection is not for inventions

Broadly speaking, a patent protects an invention in

many embodiments, which incorporate the under-lying invention. Functional and/or aesthetic design

is applied to a commercially suitable embodimentin order to bring it to market acceptance.

How long does design registration protect you?

The maximum duration in South Africa of protectionfor an aesthetic design is fteen (15) years where -as the duration for a functional design is ten (10)

years from registration or from the release date,whichever is the earlier. Annual renewal fees must

be paid after the third year. The fees may be

viewed on the CIPRO website at www.cipro.gov.za.



9

Provision is made for the restoration of lapsed

design registrations where the lapsing was uninten-tional and where no undue delay has occurred inthe making of the application for restoration.

Abuse of design rights

Compulsory licences are possible in the case of abuse of rights, eg. failing to make the design avail -able adequately and to a commercial extent, failingto meet the demand for the design to an adequate

extent and on reasonable terms and failing to grantlicences on reasonable terms, where they shouldbe granted in the public interest.

What will design registration protection cost you?

The South African costs are given below. Consult

an IP lawyer for foreign costs, they are generallymuch higher than for South African rights.

A R240 revenue stamp is all that you need pay if

you le the application yourself. A patent attorney

might charge R4 000 to do it for you. If he has to do

drawings that would be extra and drafting de nitive

and explanatory statements and an abstract requiresa further fee. The rst renewal fee is R120 and the

last for functional designs is R110, for aestheticdesigns R149. A patent attorney would charge

about R725 for maintaining a reminder system for you and renewing the registration for you (2008

fees). The attorney’s fees include not only profes -sional advice but also the creation of a le, prepara -tion of documents and drawings and the running of a maintenance and reminder system for timeous

renewal of registration fees.

What countries are covered by designregistration protection?

A South African registered design has effect only inthe territorial area of South Africa. To obtain pro -tection in other countries applications have to be

led in such countries. A South African application

can serve as a basis to claim convention priority

rights in most other countries, provided a corre -sponding application is led in that other country

within six months of the South African application.

A community design covers 25 European countries.

Tips and comments on design registrationprotection

A design must be registered in one or more speci-ed classes listed in the Designs Classi cation of

Goods. The protection afforded by the registration

is restricted to the nominated class or classes inwhich the design has been registered.

Classi cation lists are available from the Designs

Registration Of ce at CIPRO in Pretoria (see ad -dress list inserted in this Guide .

It is probably safer to keep new designs con den -tial until a registration application has been led,

however, if you wish to use the 6 months grace

period it would be wise to discuss this with a patentattorney. Employees and others should be required

to sign con dentiality undertakings.

Once your design is registered, it should be markedwith the words “registered design” and the registra -tion number; otherwise you may nd that infringe -ment damages are not recoverable. It is a criminal



10

offence to indicate that a design is registered if itis not.

When you are commissioned to create a design,

ensure that the term of the contract correctly re-ects your intentions and your rights to the design.

Basic procedure for design registration

A private individual or a company may apply. The

applicant may le the registration him or herself or

by making use of the services of a patent attorneyrm. It may help you to have a look at the Patent

Journal before you ll in your application forms.

The Patent Journal is a monthly publication with bib-liographic information, accompanied by a writtennote and drawings or images concerning registra-tion of trademarks, patents and designs. You can

order the Patent Journal from Government Print -

ing Works, Bosman Street, P/Bag X85, Pretoria0001.

The basic procedures to register are as follows:

Step 1: It is advisable to do a novelty search at the

search facility at CIPRO’s Paper Based DisclosureCentre. The cost is R4 and it i s a search that the

applicant can do him/herself or appoint a patent at -torney to do it on their behalf at extra costs.

Step 2: To apply for registration, a set of forms mustbe completed consisting of D1 (dupl.), D2 (dupl.),

D3, D6 (dupl.) and D8 (dupl.). The registration fee

is R240. Application forms can be obtained from

the Registrar of Designs at CIPRO or can be down-loaded from their website www.cipro.gov.za

Representations of the design must be led on A4

size paper. It can be drawings or photographs. Draw -ings are preferred as far as possible, without expla-nations or side scripts. The applicant may indicate

which view is shown, for example front view, side

view, etc. Photographs must be studio photographs.

No background details or person must be in the pho-tograph. It must only show the object that needs

to be protected. If other objects need to be in the

picture for indication purposes, a disclaimer mustbe written in the Explanatory Statement to disclaimprotection of that part. There may be more than one

view on a page, but seven identical clear copies

must be submitted of every page, for example if

there are three different pages – 3 x 7 copies. On

one of those pages, one picture that shows theobject the best, must be attached to D8 “for pub-

lication” to be advertised in the Patent Journal.

If the applicant wishes to register the design in other countries as well, he/she needs to do so within six

months from the ling of the South African ling by

making use of the services of a patent attorney rm.

PAtents

What does a patent protect?

A patent refers to a new and non-obvious invention,

which is suitable to be applied in trade or industry or agriculture. An invention can be a new product, proc -ess, device or the like, or an improvement on an

existing product, process, device or the like.

}



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Who is protected by a patent?

The applicant for a patent must be the rightful owner of the invention; eg he must be the inventor, the

assignee of the inventor or the inventor’s employer

if the invention was made in the course and scope

of employment.

How does a patent protect you?

A patent is a monopoly right conferred by the Statefor a limited period of time. Hence most commonly

a patent is a national right limited to the nation con-cerned, but there are a few regional patents, onefor Europe, one for “English-speaking” African coun -tries and one for “French-speaking” African coun -tries. A patent for “Europe” now extends to numerous

East European and Mediterranean countries aswell.

A patent gives you the right to exclude others from

making, using, exercising or disposing of your in-vention, so that you can enjoy the whole pro t and

advantage accruing from the invention for the dura -tion of the patent.

Are there any exceptions to patent protection?

Certain categories of inventions excluded from pat -ent protection in most countries are the traditionalcopyright works or any aesthetic creations; a meth -od, scheme or rule of doing business or playing agame; a scienti c theory or mathematical method;

the presentation of information; a computer program,

and methods of medical treatment. Sometimes ex -cluded categories can be indirectly protected by mo-

nopolising the technology necessary for them.

How long does a patent protect you?

A provisional application is available in South Africa

and a few other countries, including UK and USA,and obtains provisional protection for a period of

twelve months in all Paris Convention countries

(about 154); this can be followed by a complete

application in selected countries (before the expiry

of the twelve-month period), which provides pro -tection for generally 20 years from the date of ling

the complete application, renewable usually from

the 4th year, in each country. However, increasinglySouth Africans are choosing rather to obtain foreignpatent rights by entering the PCT (Patent Co-oper -ation Treaty) system, for which see below.

What will patent protection cost you?

If you le the provisional patent application in South

Africa yourself, a R60 revenue stamp will suf ce.If the provisional patent is led by a professional

(which is preferable, to avoid subsequent invalidity

or complications arising from inadequate descrip-tion or too narrow a de nition of the invention), the

fee might be anything between about R5 000 andR7 000 or more, depending on the complexity of theinvention.

The complete patent ling in South Africa, which

must be done by a patent attorney or patent agent,will cost between R7 000 and R10 000 or more,including of cial fees. The renewal fee, payable

annually from the 3rd year onwards, is on a slidingscale from R130 to R206 for of cial fees and

R725 for a patent attorney’s fee. As in the case of

design registration, the patent attorney’s fee will



12

include professional advice, preparation of speci -cation drawings and formal papers and the imple-mentation of a system to remind you and makingthe payments.

What are the registration requirements for a

patent?

You, the inventor, or your patent attorney can apply

to the Registrar of Patents at CIPRO for a patent.

Application for a patent can be made by way of aprovisional application, to obtain provisional protec -tion, followed by a complete application (this must

be done by a patent agent or a patent attorney).

Alternatively, a complete patent application may be

led in the rst instance. (See address list, inserted

in this Guide ).

What countries are covered by patent protection?

A South African patent has effect only in the territo-rial area of South Africa. If you require protection in

other countries, you must le separate applications

in such countries. An exception is the regional

patent for Europe and regional patents in Africa.

Your South African patent application can serve

as a basis for claiming so-called convention priority

in respect of foreign applications in the majority of other countries. You must le such foreign appli -cations within twelve months of your rst South

African application.

An important alternative, used increasingly since

South Africa joined the PCT in May 1999, is toextend the period of provisional protection from

12 months to 30 months, internationally, by ling a

PCT (Patent Co-operation Treaty) patent applica -tion. Rights are provisionally reserved in 135 coun -tries and the bene t of an international search

and preliminary examination is included. The ad -vantages include deferring the costs of ling in

foreign countries, an early reliable and impartialindication of validity (at the 16th –17th month), with

opportunity to amend if it is necessary, which canform a basis for con dence by investors. At the end

of the PCT procedure the patent application will bein a better condition to go through the examinationsuccessfully in each country in which you nally

patent.

Tips and comments on patent protection

The term “new” means that the invention or infor -mation about the invention should not have been

available to the public anywhere in the world. Ac -cordingly, it is of vital importance that your patent

application be led before your invention is made

known to members of the public.

You should neither discuss your invention nor show

it to anyone who is not legally bound, by contractor by the nature of your relationship with them, tokeep it con dential. Disclosure of your design or

invention to a professional advisor, eg a patent

attorney, is not a premature disclosure because heowes you a legal duty of con dentiality, and what

you tell him will be privileged in law.

The ling of a provisional application in the rst

instance has several advantages, including that

it can be led relatively quickly (since only a pro -visional speci cation is required to be led), and



13

it secures a ling date yet affords a twelve-month

period during which the novelty, technical merit and

commercial prospects can be further investigated,

before the application is completed.

This twelve-month period may be far too short for

developing the invention into a product. Hence the

value of the PCT procedure mentioned above,

which gives 30 months. In addition, it may be advan -tageous not to le a patent immediately, provided

that the novelty of the invention will not be adverse -

ly affected by the delay. Limited protection duringthe product’s development and testing phase can

be achieved in other ways, eg a con dentiality or

non-disclosure agreement, before a patent appli-cation is led (see Licences, Assignments and other

Agreements, page 20). Once the patent is led,

the clock starts ticking and you have limited time

before deciding whether or not to le a complete

patent and, if so, in which countries.

If your provisional patent protection time has ex -pired, it may be possible to re- le your application.

This, however, carries the disadvantage that you

lose your original le date, which can have serious

consequences. Do not take this decision lightly and

preferably seek professional advice.

In some (rare) instances, it may be better not to pat -ent your discovery or invention but to continue to

keep it secret, eg as in the case of the formula for Coca-Cola. This enables you to have monopoly

rights well beyond the 20 years of cover granted by

the patent! This option is viable only if it will not

be possible for outsiders to analyse and deter-

mine your invention, or for insiders to reveal it.

The provisional patent application secures the date

and a right to the invention but does not guarantee

that your claim is legitimate. No search is done by

the Registrar of Patents in South Africa to ensurethat your idea is unique and there could well beanother similar invention, either local or overseas.

The onus is entirely on you, the applicant for thepatent, to look into this question. This means that

patents may be granted in South Africa for inven -tions that are not new and that may even have been

patented. It is worth the additional time and costs

to conduct an international search to ensure theuniqueness of your invention even before ling the

provisional – also this could save you from re-invent -ing the wheel. South Africans now have good access

via Internet, to international patent databases (see

the addresses under the heading “Internet Search-ing Addresses”).

In most overseas countries, such as the USA and

Europe, intensive worldwide patent searches are

carried out before a patent is issued, thus ensuringthat the invention is truly unique. This is where the

PCT procedure is helpful, as it includes the pre-liminary search, which is good insurance againstadverse results later.

Five years after the date of application for your pat -

ent in South Africa, any person can obtain details of search results in any foreign patent applications youmay have led. Publication of granted foreign pat -ents usually include details of prior art that was con-sidered before the grant to you.

Searches in the markets where you intend to sell,are necessary if you want to be sure that in manufac-

turing you do not infringe someone else’s patent.



14

It is quite possible to nd that a product is protected

in some countries and not in others.

Inventions and supporting literature should all be

marked with “patent applied for” or “patent”, with

the relevant patent number, to ensure that infringe -ment damages can be recovered. Falsely claiming

that patent rights exist is a criminal offence.

Basic procedure for patent registration

Step 1: It is advisable to do a ‘novelty search’ at the

search facility at CIPRO’s Paper Based DisclosureCentre to make sure that the invention is truly new

and will not infringe on someone else’s existing pat-ent rights. It is a manual search that the applicant

can do him or herself and costs R4. A patent attor -ney may also be appointed to do this on the appli-cant’s behalf. It is also advisable to do searches on

other countries’ patent websites to ensure as far pos-sible, that the invention is truly new. If no similar

invention is found, the applicant can take the next

step, which is to register the invention.

Step 2: The applicant can apply for provisional pat -ent rights by completing a set of application forms,which consist of form P1 (dupl.), P2 (dupl.), P3 and

P6. The registration fee is R60. A detailed, broad

description of the invention must be prepared on

separate A4 size paper that must be attached to

the application forms. Neat drawings in black ink (on

A4 paper) may also be included to help with the

description of the invention. The wording of the

description is very important and the description

may not be altered or added to after it has been

lodged at CIPRO. The protection of the patent will

depend on the wording used in the description.

The provisional patent will be valid for a period of

12 months. In these 12 months, the patent may be

manufactured and marketed. Any time during these

12 months, the nal patent may be led when the

applicant is con dent that the invention is suc -cessful.

A private individual or a company may apply for a

patent. The inventor/s can only be indicated as natu -

ral persons and not a company. If a company is theapplicant or if the applicants differ from the inven -tor/s, an assignment of invention document from

the inventor to the applicant must be led with the

application. It is more advantageous to apply in a

private capacity – especially if it is planned to le

the patent internationally Patent Cooperation TreatySystem (PCT).

A provisional patent may be extended up to three

months, but a priority claim in a foreign country mustbe within 12 months. The cost for extension is R50

per month. Alternatively, the applicant may apply

for post-dating, but the original protection date willbe forfeited (the application date is “shifted” on as

if the application was led on a later date). One may

post-date up to six months. The cost is R50.

Step 3: The nal (complete) patent can be led in

South Africa only or with the PCT international ling

system.

The SA Patent Act requires the signature of a regis-tered patent attorney on the speci cation. Through

}

}



15

the PCT system, an applicant may apply him/her -self by doing an international reservation in mem -ber countries of PCT. If an applicant applies in a

private capacity, the applicant will receive a huge

discount on the reservation fee. The reservation

fee is roughly ± R6000 (including the discount). Later

when it reaches the national phase (where the

application is led in the different countries), fees

are paid as set by each country, around R 35 000average.

After the application has been accepted and granted

(advertised in the Patent Journal ), the patent needsto be renewed annually from the third year to keepit in force. The renewal may be paid by the owner

of the patent him/herself or a patent attorney rm.

The renewals may be paid in advance. A patent’s

life span is 20 years. The renewal fees work on a

gliding scale and may be viewed on the CIPRO

web site www.cipro.gov.za

tRADeMARks

What is a trademark?

A trademark is a means of identi cation of your

goods and services and serves to distinguish them

from the same kind of goods and services suppliedby others. Trademark law in some countries, includ -ing South Africa also protects collective marks and

certi cation marks.

A trademark may consist of any sign capable of being represented graphically, including a device,

label, name, signature, word, letter, shape, con-

guration, pattern, ornamentation, or a container

for goods, or any combination of these. A trademark

should be capable of distinguishing your goods or services because of its inherent nature or as a result

of use.

A certi cation mark must be capable of distinguish -ing goods and services in respect of kind, quality,

quantity, intended purpose, value, geographical

origin or other characteristics of the goods or servic -es, or the mode or time of production of the goods or of rendering of the services.

A collective mark is one capable of distinguishinggoods or services of persons who are members of

any association from goods or services of persons

who are not members.

How is a trademark used?

Your trademark should be used upon or in relation

to your goods or services, to distinguish them fromthose of others. It also serves as an indication of

consistent quality.

How does a trademark protect you?

Although you can devise and use your own trade -mark without registering it, its main bene ts accrue

through registration. A trademark registration entailsnumerous advantages for you, e.g. a trademark reg -istration affords you, the owner, the right to prevent

the unauthorised use by another party of an identicalor confusingly similar trademark in relation to goodsor services that are covered by the registration and

also similar goods and services. It also acts as deter -rent to prospective infringers; it enables proceed -

ings for infringement to be instituted in terms of



16

the Act; it can form the basis of an objection to an

application by another to register a confusinglysimilar trademark.

Provision is also made for infringement by use of

a trademark, which is identical or similar to a reg-istered trademark if that use would take unfair advantage of or be detrimental to the distinctive

character or repute of a registered trademark.

Are there any exceptions to trademark

protection?

A mark may not be registered that is not capableof distinguishing goods or services or which con -sists exclusively of a sign which may serve in trade

to designate the kind, quality, quantity, intended pur-pose, value, geographical origin or other character -istics of the goods or services. Nothing offensive,

immoral, confusing, or indicating government pa -tronage may be registered. Infringement will not

arise in the case of bona fde use of names anddescriptive material, reference to the indicated

purpose of goods and services, including spare

parts and accessories, parallel importation, andthe use of utilitarian features.

How long does a trademark protect you?

Protection is for an inde nte period, provided that

you pay the renewal fee every 10 years.

What will trademark protection cost you?

An application for registration currently costs R3 559per class and renewal costs R1 910 (attorneys’ fees

included). If you do it yourself the revenue stamps

cost R590 for a ling and R260 for renewal (2008

fees). Note that, as mentioned with design regis -tration and patents, there are various advantages

to be gained by obtaining professional advice.

What are the registration requirements for a

trademark?

Registration is achieved by ling an application at

the Trademarks Of ce in the country in which you

intend to market products under your trademarkand require protection, e.g. in Pretoria, for the South

African market. Trademark rights arise either by

registration or by the use of the trademark in thecourse of trade for a given period of time. If a regis -tered trademark has not been used for a period (in

South Africa it is a period of ve years), the regis -tration can be cancelled at the insistence of an

interested party. (See address list, in the insert of this Guide ).

What countries are covered by trademark

protection?

As is the case with regard to patents and registereddesigns, a trademark registration is effective only in

the country in which you le the trademark. Regional

protection can be applied for under the CTM (Com -munity Trademark) system, to cover countries of

the European Union and under the Madrid Protocolto cover a series of countries in the world. South

Africa intends to join the Madrid Union, perhaps inthe course of the next year or so. These opportuni -ties are not, however, free of potential di f culties

and you will need to consult a specialist, such as



17

an attorney who has obtained the Trademark Practi-tioner Certi cate from the Institute of Intellectual

Property Law. A South African application can again

serve as a basis for your claiming convention priority

in respect of corresponding applications in other countries, provided such foreign applications are

led within six months of the South African applica -tion.

Tips and comments on trademark protection

Unlike in the case of patents and designs, noveltyis not a requirement for a valid ling. Generally

speaking, the person who is using or intends to usethe trademark may le the application. Thus an

intention to use is a requirement and in some coun-tries (eg USA) use in commerce.

The proprietor of a trademark may allow a licensee

to use his mark, but must ensure that no publicdeception or confusion will arise as a result. Regis -tration as a “Registered User” is advisable.

A trademark may become non-distinctive where

everyone uses it as the accepted description of a

product or service. If it becomes customary in cur -rent language, it will no longer be validly registered.

A trademark is an adjective and is not used as a

noun or verb. It should, therefore, be followed by the

generic name of the product. Trademarks must be

distinctive e.g. in their colour, typeface or background

or any combination of these. If they are registered,

“registered trademark” should be indicated, or an

abbreviation, eg an encircled ®, given.

There are various classes in the Trademarks Reg -ister and a separate application has to be led for

each class of goods or services claimed.

A trademark, logo, corporate identity or brand imageis probably the single most valuable marketing tool

that a business can have. It is therefore vital that

this asset is understood and properly protected.

Before a trademark is adopted for use, it is stronglyrecommended that a search be conducted by aproperly quali ed professional person to determine

its availability in the light of trademarks that have

already been registered.

note: The Government does intend for South

Africa to join the Madrid Union for international regis-tration of trademarks. Enquire at CIPRO for more

information in this regard.

Basic procedure for trademark registration

The person must make sure that he/she chooses

a unique NAME for the product or service. It must

not be descriptive of what the product is.

Step 1: It is strongly advisable to apply for a special

search at the Trade Mark Section of CIPRO. Form

TM2 needs to be completed and a fee of R85 ispayable. If there is a logo and/or slogan involved,

this must also be indicated on the form TM2. The

classi cation can be determined from the NICE

Classi cation (a link is provided on the CIPRO

website to this class list). Each different name and

different class will be a different search and reg-istration. The search result is usually available in

eight working days.



18

A spot search can also be done at the of ce at a

cost of R4 per name, but this is only for an identi-cal search and it is NOT advisable to le a regis -tration based on the result of a spot search. The

main purpose of this spot search is only to nar-row down your options if you are not sure aboutthe name to choose for a proper special search.

Step 2: If there is no con ict, the person may apply

for registration of the trademark by completing formTM1 in triplicate. The government fee is R590.

If a logo is involved, it must be attached in the block

on the form TM1. A registration number is allocated

the next working day. The person may trade with

the name with a TM sign next to the name.

Step 3: After examination of the mark (presently

in 36 months time from ling the registration), an

acceptance notice will be sent to the applicant.

This must be taken to the Government Printer to be

advertised in the Patent Journal for three monthsfor possible opposition. If there is no opposition,

the certi cate will be issued and the TM sign may

be replace with the ® sign.

The trademark must be renewed every 10 years

to keep it in force. If the applicant wants to register

the mark in other countries with priority claim, theymust do so within six months of the SA registrationby making use of a patent/trademark attorney rm.

CoUnteRFeIt GooDs

What does the Counterfeit Goods Act protect?

This law in South Africa (from 1 January 1998) intro -duces measures aimed against trade in counter-feit goods. Such laws already exist in rst-world

countries, eg the UK.

Who is protected?

You, the owner of trademarks, copyright works andcertain merchandise marks are given more effec -tive ways than were available in the past to prevent

piracy of your rights in counterfeit goods.

How does the Counterfeit Act protect you?

The Act prohibits dealing in counterfeit goods by:• being in possession of or controlling counterfeit

goods;

• making counterfeit goods;

• selling, hiring, bartering, exchanging or offering

counterfeit goods;

• exhibiting or distributing counterfeit goods, for

trade purposes, or in any prejudicial way;

• importing or exporting in, out or through SA; or

• disposing of counterfeit goods.

The Act empowers inspectors and police, who have

a warrant, to enter premises, stop a vehicle if neces -sary by force, seize, remove and detain counterfeit

goods, collect evidence, search and terminate coun -terfeit activities. The Commissioner for Customs and

Excise and Customs staff have power to seize and

detain counterfeit goods imported into the country.

}

}



19

Seized goods are removed to warehouses and initial

dif culties of limited space are being overcome, to

make this law effective.

PRoteCtIon bY otHeR LAws

In addition to the various forms of protection dis -cussed so far, a product design may enjoy somemeasure of protection on the basis of the principlesof common law (law not found in Acts of Parliament)

in common law countries and in certain other laws.

Under common law you, the creator of a design,may be able to prevent others from exploiting a con -fusingly similar version of your design on the basis of

passing it off to the public as yours; or prevent others

from reaping the commercial bene ts and advan -tages of your design by appropriating to themselves

a substantially similar design and exploiting it in cir-cumstances amounting to unfair competition.

The law of unfair competition provides, in general,

that anyone who intentionally or negligently causesloss or damage to you, a business rival (ie a com -petitor), through his wrongful conduct, will be liable

for damages, and his conduct can be stopped or prevented by way of an interdict.

The following are situations where your rights maybe wrongfully affected:• where someone imitates the distinctive appear -

ance, trade name, get-up, etc, of your productsso as to deceive or confuse the public into taking

his products as those of yours, ie so-called pass-ing off;

• where someone deceives the public as to the

quality, extent, nature, etc, of his own goods or service;

• where someone carries on his business in con -travention of the law;

• where someone spreads disparaging and un -true allegations about your goods, service or

business;

• where someone acquires and uses (without au -thority) your con dential information or trade

secrets; and

• where someone appropriates to himself the fruits

of your skills, labour and expense, eg by tooclosely copying his competitor’s (your) product

designs.

PRoteCtIon eLsewHeRe

The cost for South Africans of obtaining legal protec-tion elsewhere requires a carefully planned strategyincluding marketing, nance and cash ow projec -tions, based on realistic cost projections. You must

consult an experienced IP practitioner for assistance.

All forms of legally recognised intellectual propertyprotection are only enforceable within the area of the country’s legal jurisdiction. This includes other

African or overseas countries, which operate inde -pendently when it comes to the protection of intel-lectual property. For this reason you need to le

patents and register trademarks and designs sepa-rately in these countries, as has been discussed.

Note that some countries are signatories to inter-national protection agreements and others not. This

means that if they are signatories, they will honour the date of your ling or registration in this country,

provided that you lodge your application for protec -tion in their country within the prescribed time.



20

For those countries that are not signatories to anyinternational agreements relating to protection of intellectual property, you need to register or le

separately in those countries. Your nearest patent

attorney will be able to give you more information

on such countries. Alternatively, contact the Patents

Of ce in Pretoria (see address list, inserted in this

Guide ).

LICenCes, AssIGnMents AnD otHeR AGReeMents

Once a product design has been completed, it islikely that you, the designer, will have to enter into

one or more agreements with others in regard tothe further exploitation or commercialisation of your design. Although a written contract is not always

compulsory, it is always advisable to reduce the

terms and provisions of an agreement to writing. It

is preferable to obtain the assistance of a lawyer inthis regard, but whether or not you get a lawyer,it is of the greatest importance to put it in writing.

The following types of agreements often arise with

regard to novel products:• An assignment agreement, when you, the origi -

nal designer, decide to sell your design and allrights in it to someone else, so that they will be-come the new owner of all the rights, and willexploit the design for their bene t, usually upon

payment of a lump sum, but sometimes coupledwith a continuing royalty payment.

note: An assignment of copyright must be inwriting.

• A licence agreement, where you, the original de -signer, decide to retain ownership of this designand the rights therein, but licence or authorisesomeone else to be responsible for the com-mercialisation of it, usually upon payment of acontinuing royalty to you.

• A con dentiality agreement, where you, the orig -inal designer, need to disclose con dential infor -mation to someone else, eg to acquire technicalassistance, nancial assistance, marketing ad -vice, etc, and you wish to safeguard your rights.

• A joint venture agreement, where you, the origi -nal designer, wish to enter into a partnership or other continuing business relationship with some-one else in regard to the further exploitation or commercialisation of your product.

• A registered user agreement, where you, theoriginal designer, have registered a trademark

in respect of your product, and wish to give some -one else the right to use your trademark.

note: A registered user agreement shouldpreferably be in writing, and should preferablybe recorded at the Trademarks Of ce.

• A restraint of trade agreement or clause, eg

where an employee leaves employment, or

when a business is sold. A restraint clause may

be held to be unenforcable if it is unreasonable.

It is possible that some of these agreements can berecorded against a design, patent or trademarkregistration, to notify third parties of the contrac-tual position. It is usually important for the person



21

receiving rights under such agreements for them to

be registered at the Design, Patent or TrademarkOf ce.

Lawyers well experienced in competition law shouldbe consulted, as well as IP lawyers, for example,competition law in South Africa, anti-trust law in USAand the block exemptions to the free-trade rules inEurope may be most important in structuring IP-related agreements.

PRoDUCt LIAbILItY

The manufacturer or designer of a product can beheld liable for loss or damage caused as a result of the use of his product, either on the basis of con-tract or on the basis of delict (or unlawful conduct).

Liability on the basis of contract

Where there is a contractual relationship between

the designer or manufacturer of the product andsomeone suffered loss or damage, eg where thedesigner or manufacturer sold or supplied the prod-uct to that person, liability can arise. The liability is

based either on a breach of warranty (express or

tacit) that the product will be suitable for its purpose,

or on the warranty (tacit) of a seller against latent or

hidden defects in the product or on the basis of someterm in the contract.

Liability may be excluded by way of a suitable in-demnity or other clause. Such a clause will be en -forceable provided that it has been brought to the

notice of the other contracting party, and provided

that it is reasonable and not against public policy.

If the product involves inherent dangers or risks,

it is essential that suitable warnings be given.

Liability on the basis of delict

Liability can arise also in circumstances where thereis no contractual relationship between the designer of a product and the person who suffered the lossor damage. The liability in this case is based on the

principle that someone will be liable who, throughhis intentional or negligent conduct in supplying adefective product, causes loss or damage to some -one. Negligent conduct occurs where a designer

provides a product that will be defective or danger -ous even with normal use, or where the designer

neglects to warn a purchaser against inherent dan-gers, or neglects to instruct a purchaser on proper installation and/or use and maintenance to avoid

potential dangers.

Where the product is inherently dangerous or can

be used in a dangerous manner, a complainant willhave to show that the loss or damage arose as a

result of an inherent defect in the product, or as aresult of the normal installation or use of the product,and that the designer acted negligently, eg in failingto ensure that no defects existed, or in failing to warnagainst potential risks or dangers.

It is essential that suitable warnings be provided

to users of the product where it involves inherent

risks, or requires precise installation or use.

Where the user of a product adapts or modi es the

product, and as a result suffers loss or damage,the original designer or manufacturer is unlikelyto be held liable.



22

It should be noted that certain safety requirementsor minimum standards may have been prescribed in

regard to certain products (eg electrical appliances),

by law often through standards authorities such asthe DIN and TÜV in Germany, SAE in USA, BSS inUK and the SABS in our country and other regula-tory bodies. Our SABS can give you assistance not

only in regard to standards compliance here, butalso in contacting foreign standards authorities.

This is especially important in the case of items suchas workshop machinery which in South Africa mustcomply with the Machinery and Occupational SafetyAct, 1983 (the MOS Act), and the National Occupa -tional Safety Act (NOSA) requirements. It is recom -mended that the designer of a product that is likelyto involve safety aspects make the necessary en -quiries in this regard. (See address list in the insert

of this Guide .)

VALUAtIon oF InteLLeCtUAL PRoPeRtYWhat could this mean for me?

While Intellectual Property, eg patents and trade -marks, has always been valued, increasing recog -nition for this aspect has become well established,especially for asset registers in company balance

sheets. Realisation has gained ground amongstaccountants and corporate executives that IP can

form a signi cant proportion of the assets in some

businesses. For example, it is believed that the

value of the Coca-Cola trademark, although an in -

tangible asset, probably exceeds the capital value

of all plant producing and bottling Coca-Cola world-wide. Placing IP value on the balance sheet can im -prove the leverage of a company and justify in -creased loan nance.

So don’t underrate the value of a portfolio of protec -tion for your design, the portfolio may include a pat-ent, design registration, copyright and trademarks.

Professionals are developing specialist practices

in the skills of IP valuation.

tAX IMPLICAtIons

Should you generate or derive income from patents

and similar property, you may, over a period, deduct from

taxable income your expenditure on:• devising and developing an invention;

• generating or making a design, trademark, copy -right or similar asset;

• registering or obtaining a patent, design registration

or trademark; and

• acquiring from someone a copyright, design, patent,

trademark or similar property.

Since South African tax law is based on the residenceprinciple and no longer the source principle, income ina South African resident’s hands, from foreign sourcesis taxable. The international structuring of IP owner -

ship and revenue ows is an advanced and complex



23

subject and will require advice from specialists in

this eld.

Value added tax (VAT) is assessed on intellectual

property transactions, unless they relate to foreignrights or foreign residents, when the tax is zero

rated .

Consult a tax expert about exceptions to this ruling,eg how it affects South African residents, companiesin neighbouring states or exporters.

The costs of extending or renewing the term of apatent, design registration or trademark can be de-ducted in full, provided that you produce or derive

income from these assets.

InteLLeCtUAL PRoPeRtY ACts AnD tReAtIes

Copyright in South Africa is governed by the Copy -right Act, 1978 (Act 98 of 1978), as amended.

The Berne Copyright Convention (1886) determines

international rights between signatory countries, asdoes the Universal Copyright Convention (1952).

• Registered Designs are governed in South Africa

by the Designs Act, 1993 (Act 195 of 1993).• Patents are governed in South Africa by the

Patents Act, 1978 (Act 57 of 1978) as amended.

• Trademarks are governed in South Africa by

the Trademarks Act, 1993 (Act 194 of 1993),

as amended.

South Africa is signatory to the International Con-

vention for the Protection of Industrial Property (theParis Convention) which relates to patents, designs

and trademarks.

This Convention provides for recognition of rights of

priority of designers, inventors and trademark own -ers who have led for protection in eg their home

country.

A single patent application can be made at the Euro-pean Patent Of ce (EPO) in Munich to cover 31

European countries and 5 extension states.

A single application to the Eurasian Patent Conven -tion (EAPO) covers 9 countries of the former Soviet

Union.

Regional patent grants covering African countries

are available to South Africans, they are: ARIPO

covering 13 (former British colonial) countries (ex -cluding SA), Namibia and Mozambique; and OAPI

covering 15 (former French colonial) countries.

The Madrid Protocol relates to the international reg-istration of marks and South Africa intends to joinwithin the coming year or so.

The Community Trademark Convention enables

South African applicants to le a single trademark

application with the Community Trademarks Of ce

in Alicante, Spain, which will have effect throughout

the whole European Union.

As local and international legislation is constantlybeing reviewed, always consult a patent attorney

for the latest changes to legislation.



24

tHe PRoDUCt DeVeLoPMent PRoCess

The journey of a new product – from idea to inno-

vation – comprises a complex process requiring awide range of experts, including people such asengineers, industrial designers, market consultants,manufacturing specialists, intellectual property ex-perts and more. The success of product develop -ment is greatly in uenced by the cost, quality and

the time to market of the innovation. The innovator

is faced with the challenge of considering from the

outset all elements of the product life cycle and de-sign the product to be successful in each stage of its life cycle. Concurrent engineering is an enabling

approach that offers exactly this.

To get a new product into the market, the innovator

must do more than just develop something that

works. The technical development steps involved

in developing a new product should be matched toa careful assessment of the new product’s market .

At the same time, the innovator needs to evolve a

business structure to support these activities and

to protect his or her interests including intellectualproperty.

Enterprise creation

Good product ideas often have the potential to be

developed into business opportunities. The typical

development process of a small business is shown

in the diagram (top) on page 25.

However, there are many pitfalls on the road to a

successful product or business, which can be avoid -ed by calling on experts to support you.

Find information on institutions that can assist youwith developing your product in the insert of the

Guide . Visit www.productdevelopment.co.za for more information on product development.



25

Product or

business idea

Product

research

– Customer – Sample

collection – Data

collection – Theme/image

identi cation

Product

development

– Projectplanning

– Conceptgeneration

– Productdesign

– Prototypegeneration

– Design

optimisation – Design for

manufacture – Process

optimisation – Patenting – Pilot

production

Feasibility

– Marketfeasibility

– Technicalfeasibility

– Economicand nancial

modelling – Business

plan

preparation – Identify and

select keystaff

– Identify andapply for incentives

– Funding and

investment – Contracting

Enterprise

creation

– Foundationbusiness

– Mandatoryregistration

– Identify andselect tech-nology andequipment

– Identify and

selectsuppliers

– Identify andselect staff

– Productionsystems

– Managementsystems

– Businessprocesse

– Install andcommission

– Training

Incubation

and support

– Technicaltraining

– Businessskills andtraining

– Technicalsupport

– Businesssupport

– Socialsupport

– Marketsupport

– Legal support – Image

support

Enterprise

improvement

– Competitive -nessimprovement

– Businessskillsdevelopment

– Technicalskillsdevelopment

– Market skillsdevelopment

– Qualityimprovement

} } } } } }



26

We tend to think of National Standards and design

as being from two different worlds. We think of de -sign as being at the ‘leading edge’ nding new solu -tions to problems, a more proactive approach to

problem solving. Standards on the other hand, are

considered to be reactive, since by de nition, these

documents are developed by groups (or commit -tees) and describe existing best practices or solu -tions to problems.

Although the two groups approach problems froma different perspective, the two worlds are moving

closer together and the work done by designers isof bene t to standards developers in developing

more relevant standards. The body of knowledge

contained in standards is of signi cant bene t to

designers to ensure that their products move from

good ideas to market more ef c iently.

tHe InteRDePenDenCe oF DesIGnAnD stAnDARDs

More and more frequently, the design world is start-ing to make direct reference to standards. Many

markets are starting to demand socially responsibledesign – meaning that new products need to be ableto demonstrate certain qualities to the purchasersthat may not necessarily be evident in the product

itself, for example:• the environmental impact during the design life

of the product,

• the accessibility of the product to disabled people,

• the safety of the product, particularly when used

by children,• the safety or environmental impact of the proc -

esses used to assemble or manufacture theproduct, or

• the standards or test methods that need to be

followed in order to meet certain labeling re-quirements.

Standards can be regarded as a valuable resource

for designers and in many cases are becoming avaluable part of a designer’s toolbox when con -sidering solutions to certain problems. There are a

number of examples where the use of standards canmake the life of designers and developers easier,

since certain problems could already be described.

Product safety

In the area of product safety, many standards have

been developed and many aspects of both the

safety of the product, as well as the safe installationand use of certain products have been described.

In many cases, the standards also describe someminimum performance characteristics. Examples

of such standards include the numerous electrical

appliance standards that do not necessarily describewhat an appliance should look like, but describehow it should be used (safely), as well as what it

should do.

Product interoperability

Products very seldom exist in isolation. They may

work with other products or services or they could

stAnDARDs AnD DesIGn



27

be made up of components and inputs that are notnecessarily redesigned each time. The standards

for these associated products can help the designer to develop a product that will work both effectively

and ef ciently. By way of example, electronic prod -ucts can have standard switches plugs, printed

circuits and chips incorporated into their designwhich would assist in the speed to market and thelowering of manufacturing costs.

Marking

The marking of products follows conventions andnorms that have been established over time. Many

of these are laid down in standards. It saves a lot of

time and money when doing market research if thedesigner can make use of existing resources suchas the ISO 7000 database standard on graphicalsymbols to mark the product or its components.

Labelling

Products often also require that information aboutthe product that cannot necessarily be determinedby examining the product itself, be contained in alabel. Often the requirements for product labels are

contained in legislation, but designers and manufac-turers may choose to provide additional information

depending on the intended market of the product.

These labels can include things such as the environ -mental impact of the product or manufacturing

process (eg ‘dolphin friendly’ tuna, or wood prod -ucts from a sustainable forest) or they can describe

the composition of the product (such as the nu -trient labelling of food products or composition of

plastics), or the labelling may include aspects such

as the performance rating of the product under certain conditions (eg the energy rating or fuel ef -ciency of products). In order to make these claims,

the manufacturer will need to make use of standardtests and in speci c cases, some form of third party

attestation may also be required.

Ergonomics

Many standards contain the information about therepeated use of certain products. In some cases

these can be in the form of requirements such asthe accessibility of certain products to people withdisabilities, or the safe use of the product in certainenvironments. Designers can make use of this re -source rather than having to research these issues

every time.

tHe DeVeLoPMent oF stAnDARDsOne of the key pillars of standards is that they shouldbe relevant and useful. It makes no sense for the

national standards body to develop a set of stand -ards that are not used in the market place, either because they add no value or because they hinder

the development of new products.

Standards can provide a valuable resource in terms

of de ning the problem space in which a product is

designed, by providing a set of documents that de -scribe the constraints, as well as the output require-ments for the nished product.

A standards developing organisation such as the

South African Bureau of Standards (SABS) strives



28

not to restrict innovation when drafting standards

and not to describe the products in terms of their outputs or what they should do. There is a ne

line between being exible enough to allow for the

development of new products that do not yet exist,

while still being able to verify that the product does

indeed conform to the standard.

Standards development organisations worldwide,

recognise that we do get this wrong at times – some-times standards may restrict certain new products,or technology if a eld changes over time. For this

reason, standards may be amended and are alsoregularly reviewed for relevance (every ve years

in the case of Standards South Africa, a division of

the SABS).

Standards can re ect the changes in the market

place and the problems that designers are facing if these people participate in the standards develop -

ment process. Standards developers and designersneed to work together to ensure that the standardsthat we have are relevant, that they allow for inno -vation and that they cover the areas that need to

be covered.

stAnDARDs As A MARketInG tooL

The introduction of new products to the market of-ten requires more than exciting and innovative de -sign. Many purchasers are risk-averse and would

like to know that the product conforms to certainminimum requirements or standards. It therefore

pays to have some form of compliance statement

as part of the marketing strategy.

In areas of new product development, it may also

form part of the marketing strategy to have your

product described as the national or internationalstandard for this speci c product so that your prod -uct complies to the standard at least or at most,your product complies but your [future] competitors’do not.

Designers should not only look at standards as aconstraint on their new designs, but should regardthe incorporation of standards as a way to increasethe competitive potential of their designs.

In summary, as more new products enter the marketat an increasing rate, it is becoming apparent thatkeeping abreast with the latest design trends can

lead to better standards. At the same time, designers

can deliver better and more ef cient design by keep -ing abreast with the latest developments in stand -

ards.

Standardisers and designers should work moreclosely together in order to provide innovative and

relevant products that get to the market place.

To contact the Standards Division of the SABS,

refer to the insert in this Guide .



The SABS Design Institute, promotes the benefts

of good design in order to stimulate the economic

and technological development of South Africa

The Institute’s initiatives focus on education, indus-

try and information. It administrates a number of

award schemes and publishes regular ad hoc pub-

lications.

The Institute founded the following initiatives:

SABS Desi n Ex e en e Awa ds

The award scheme aims at recognising the achieve-

ments of South African product designers, encour-

aging local product design and manufacture, as well

as promoting international competitiveness of local

products.

Desi n Deve pment Initiative

The Design for Development Initiative was founded

in 1997 by the Design Institute and includes confer-

ences as well as international meetings on Design

and Africa. The initiative addresses important issues

such as African global competitiveness, design edu-

cation across the continent, and design as a catalyst

for socio-economic development.

Desi n A ieve s Awa d

The award encourages entrepreneurial spirit and

design leadership amongst tertiary design students.

New p d t deve pment s pp t p amme

This programme aims at assisting and encouraging

new product development in South Africa through

the prototype consultation sessions, seminars and

publications.

ThE DESIgN INSTITuTE of ThE SABS



SABS HEAD OFFICE: Pretoria

Street Address: 1 Dr Lategan Road, Groenkloof Postal Address: Private Bag X191, Pretoria, 0001Telephone: +27 (0) 11 428 7911

www.sabs.co.za

SABS Design InstituteTelephone: +27 (0) 12 428 6326Fax: +27 (0) 12 428 6546

[email protected]

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