REGISTERING DESIGNS IN THE WAKE OF THE WOOLIES AFFAIR

SMALL business Ubuntu Baba, run by entrepreneur and owner Shannon McLaughlin, has worked hard for the past four years to produce comfy baby carriers for new mothers in South Africa, only to find that their design and trade names were copied by Woolworths.

In mid-December McLaughlin found out to her horror that her specially designed baby carriers were being copied and retailed at Woolworths’ stores countrywide. McLaughlin contacted Woolworths about the matter, only to be issued with a reference number and a response stating that a “technologist will investigate the issue”. She then posted on her blog about her concerns, stating that Woolworths had blatantly copied her design.

The blog post sparked a huge amount of interest across various social media platforms. McLaughlin subsequently indicated that she was not looking to take legal action against the big retailer, but that what they had done was morally wrong and flew in the face of the values the retailer purports to have: “helping local enterprises grow, and contributing to a prosperous, secure future for our country”.

After meeting with Woolworths, McLaughlin posted a response thanking everyone for their support. She stated that several other small business owners had contacted her to say they were experiencing similar issues with Woolworths.

Woolworths’ response on Twitter has been that they have withdrawn their baby carriers from the market, and are dealing internally with the “lapse in process” on their side.

Copying someone else’s design is common and SMEs usually have little chance of taking on big corporations, such as Woolworths, without adequate intellectual property rights to fall back on.

One way of making sure SMEs have a solid leg to stand on under such circumstances is for them to register the new and unique physical features of their products.

Registered designs grant monopoly rights in respect of the external appearance of a product and effectively protect the look and feel of the product. This allows the owner of the design to control the way in which the design is used and to stop big corporations from copying them without their consent.

Should copying take place nonetheless, the owner of the registered design rights may then decide to charge the big corporation royalties for the use of their design, and may even sell these registered rights to them at a hefty premium.

A design may have both aesthetic and functional features, both protected separately. Two of the most important requirements when registering a design is that a design should be new and original in terms of the Design Act.

A design is deemed new if it can be distinguished from what has been done before.

A crucial consequence of this requirement is that the owner of a new design must be careful not to disclose the design publicly, before filing a design application.

The Design Act, however, does provide for a grace period of six months from the first public disclosure of the design, following which it is still possible to obtain valid design protection.

Therefore, it is important for SMEs to be aware of the opportunity to register their design rights early in the design process to avoid any stumbling blocks down the line.

Internal procedures should be put in place by SMEs to identify opportunities to protect their intellectual property adequately to stop this from happening to them.

Claire Gibson and Nazli Londt are candidate attorneys at De Beer Attorneys.