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Cubed cameras and design rights – Seeing through the Go Pro/Polaroid lens

November 5, 2015

On Tuesday, 3 November 2015, Polaroid’s manufacturing company, C & A Marketing filed papers against GoPro in a law suit covering a design patent that it was granted earlier this May 2015. The design patent claims shape and functionality of a cube-shaped camera, with a recessed lens and single button.

Go Pro has been marketing and selling its own cubed-shaped camera, the Hero 4 Session for 4 months. C & A Marketing, which is the owner of the design right in the cubed camera that it launched approximately 2 years’ ago (referred to above, are claiming that the Hero 4 Session is a “copy” of the design elements of its own cubed camera.

We will have to wait and see the outcome of this interesting face-off between two heavyweights of the camera market.

For interest sake, South Africa has its own form of design right flowing from the Designs Act. There are two types of design right available for registration and protection in South Africa: a) an aesthetic design; and b) a functional design. It is possible to obtain design rights in an article at the same time other Intellectual Property Rights, including a design. Therefore, it is possible to obtain two separate design rights for the same article, if the requirements for each are met.

Designs in South Africa are elements of an article (whether aesthetic or functional) which are judged solely by the eye. An aesthetic design must be novel and original; and a functional design must be novel and not commonplace. We would draw from patent law in order to inform the concept of novelty, i.e. it must be new as at the date of application, considering the prior art in the field at that date. Originality in terms of Design law has not been judicially determined, but perhaps the concept of originality from copyright law may be of some assistance. The phrase “not commonplace” has also not been interpreted by the South African courts. Commentators have considered this element to be not trite or hackneyed.

The process of filing a design application involves first assessing the elements of the article which meet the above requirements, particularly novelty. This may require a novelty search, at some stage.  Along with the application (which includes several forms) a set of drawings and statements as to what features are to be covered by the design must be lodged with the Designs Office in Pretoria. The South African Designs Office, unlike the USPTO, does not examine your design application as to substantive requirements – it simply does not have the resources. Rather, it merely examines your application as to whether it has complied with the formalities prescribed by the Designs Act.

Intellectual Property lawyers, like myself, are skilled are preparing, drafting, filing and prosecuting design applications. My advice is to seek one out in order to file your design application, as we have the skills necessary to effectively and efficiently draft, file and prosecute your design application, obtaining for you what could be a vital asset in your business.

 

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