Your (un)fair advantage

Clean up the register before enforcing your design
6/11/2008

In an application to the High Court to enforce an order of the Supreme Court of Appeal, it was successfully argued on behalf of the first, second and third respondents, who are our clients, that the proceedings to enforce the order should be stayed until the determination of a pending review application. The order of the Supreme Court of Appeal interdicts one of the respondents from infringing a registered design. The pending review application was instituted by another of the respondents.

The proprietor of the registered design, who is seeking to enforce the order, alleges that, in defiance of the order, the registered design is being infringed. It accordingly contends that the respondents should be held to be guilty of contempt of court. Although the order is against only one of the respondents, the proprietor alleges that the respondents are alter egos of one another, and contends that they therefore should all be held to be guilty of contempt of court.

In the review application, however, the review and setting aside of the registration of the design is sought. This has a bearing on the enforcement proceedings since the order of the Supreme Court of Appeal is founded upon the existence of the design registration in the first place. The basis of the review application is that the designs register does not include a classification for the design. This issue was not raised in the previous proceedings which led to the order and appears to have escaped everyone’s attention.

Because the enforcement proceedings have now been stayed, the proprietor of the registered design cannot proceed further against the respondents until the review proceedings have been finalised.

This case shows that a proprietor of a registered design should be careful to ensure that the designs register is in order before instituting legal proceedings.
UPDATE: 25 November 2008
The applicants in the above matter have been granted leave to appeal the judgment and order staying the proceedings.


Deborah Marsicano
Associate
Deborah-m@adamsadams.co.za
  Featured Act Final day in the LSSA’s Constitutional challenge to the RAF Amendment Act (3 March 2010)
   Featured Case Law Recognition of a decision on restoration of priority under PCT in South Africa
In terms of the Paris Convention, a patent application may claim priority from a prior filed application in a convention country relating to the same subject matter, provided that the prior filed application in the convention country was lodged not earlier than one year before lodgement of the application claiming priority. In other words, there exists a 12 month period in which to claim priority. Rule 26bis.3 of the regulations of the Patent Cooperation Treaty (PCT) makes provision for the restoration of the right to claim priority if an international application has an international filing date which is later than the date on which the priority period expired but within the period of two months from that date. Upon request of the applicant, the receiving Office shall restore the right of priority if the Office finds that a criterion applied by it (“criterion for restoration”) is satisfied, namely, that the failure to file the international application within the priority period:
(i) occurred in spite of due care required by the circumstances having 		  Related People Deborah Marsicano
Senior Associate
Patent Attorney
Tel: +27 (0) 12 432 6252
Email me 		 




The firm practises directly in several Southern African countries and through long-established associates in others.