In the recent case of Lanard Toys Limited v Dolgencorp LLC, Ja-Ru Inc. and others, (“the Lanard-case”) the Federal Court in the USA found that two chalk holders, which both resemble a no. 2 pencil, would not cause an ordinary observer to believe that the two chalk holders were the same. Lanard is the proprietor of US Design Patent D671,167 (“the D’167 design”) and filed suit in the United States District Court against Ja-Ru and others for the infringement of the D’167 design. Below is a figure from the D’167 design. The D’167 design claimed: “The ornamental design for a chalk holder, as shown and described”. 

The product shown below was designed and sold by Ja-Ru, Inc. It was undisputed that Ja-Ru, Inc used the Lanard chalk holder as a reference sample in designing its product.

The District Court granted summary judgment that Ja-Ru’s product did not infringe the D’167 design. Lanard appealed the decision of the District Court and the Federal Court reviewed the summary judgment from scratch.

The Federal Court applied a two-part test to determine whether infringement of the D’167 design occurred. Firstly, the court construed the claim to determine its meaning and scope, and secondly, the properly construed claim was compared to the alleged infringer’s design. The Federal Court reiterated that the alleged infringing design has to be compared to the claimed design and not to a commercial embodiment of the proprietor’s design. 

Regarding the claim construction, the Federal Court said the following: “Indeed, we have made clear that ‘[w]here a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent’”. 

In the USA a test known as the “ordinary observer” test is applied when two designs are compared (the second part of the two part test) —i.e., infringement is found “[i]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him/her to purchase one supposing it to be the other”. 

The Federal Court found that by discounting the functional features, the following novel ornamental aspects were present in the D’167 design: “… the columnar shape of the eraser, the specific grooved appearance of the ferrule, the smooth surface and the straight taper of the conical piece and the specific proportional size of these elements in relation to each other”. 

The Federal Court placed emphasis on the following statement of the District Court: “[t]he problem for Lanard, however, is that the design similarities stem from aspects of the design that are either functional or well-established in the prior art”.  

The Federal court said that an ordinary observer’s attention would be drawn to the above novel ornamental aspects and that the ordinary observer would not believe that Ja-Ru’s product (which differed from the D’167 design in respect of these novel ornamental aspects) was the same as the D’167 design. The Federal Court confirmed that Ja-Ru’s product did not infringe the D’167 design.

A design patent in the USA is comparable to an aesthetic design in South Africa. In South Africa, design infringement is determined by construing the definitive statement (the equivalent of the claim in the USA) and the court comparing the design and alleged infringing article through the eyes of the likely customer of the class of article to which the design is applied. 

Customer confusion or deception is not considered during an infringement determination. Also, in terms of section 14(5) of the Designs Act 195 of 1993, functional features in an aesthetic design are excluded from protection. A question that may arise is, would the Lanard-case have had a different outcome, had it been heard and decided by a South African court. 

In Homecraft Steel Industries (Pty) Ltd v SM Hare & Son (Pty) Ltd 1984 (3) SA 681 (A) (“the Homecraft-case”), the Appellate Division (now Supreme Court of Appeal) applied a test which became known in practice as the step-test. 

Firstly, the step-test requires that a difference (“first step”) between the registered design and the prior art needs to be determined. Secondly, a difference (“second step”) between the allegedly infringing article and the registered design needs to be determined. If the first step is bigger than the second step, then there would be infringement of the registered design. The Supreme Court of Appeal again applied the step-test in the more recent case of Clipsal Australia (Pty) Ltd v Trust Electrical Wholesalers (Pty) Ltd 2009 (3) SA 292 (SCA) (“the Clipsal-case”). In the Clipsal-case the Supreme Court of Appeal also confirmed that it would be wrong to consider consumer confusion or deception in a design infringement case.  

The outcome in South Africa would therefore to a large extent be dependent on the prior art which was available on the priority date of the registered design. A substantial difference between the registered design and the prior art would lead to a relatively wide scope of protection, whereas a minor difference would leave a proprietor of the design with a relatively narrow scope of protection. 

Applying South African law to the facts of the Lanard case could provide a practical example as to how infringement may be determined by a South African court. Consider a first hypothetical scenario, wherein Lanard was the proprietor of a South African aesthetic design which corresponded to the D’167 design and Ja-Ru was an alleged infringer who manufactured the article as shown above. In this first hypothetical scenario, assume by way of example that the prior art, though similar to the registered design, did not provide for a ferrule and an eraser at an end of a chalk holder. 

A comparison between the prior art and the registered design would then yield a first step between the registered design and the prior art which is a significant one. From a comparison between Ja-Ru’s product and the registered design it would be apparent that the second step is smaller. In this first hypothetical scenario, a South African court would probably find that the first step is bigger than the second step and that Ja-Ru therefore infringed on the registered design. 

In a second hypothetical scenario, assume that the prior art also comprised a ferrule and an eraser at an end of the chalk holder. In this hypothetical scenario, a comparison between the registered design and the prior art would yield a first step that is relatively small. A South African court in this scenario would probably have found that Ja-Ru did not infringe the registered design. 

As the facts of our second hypothetical scenario are closer to the facts of the actual Lanard-case, it is expected that a South African court would have come to the same conclusion as the courts in the USA. Hence, although the tests with which infringement is determined in USA and South Africa, respectively, are different, the outcome (at least in our hypothetical scenario) might have been the same.