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September 20, 2013 Hanna Barry Short term, Wired No comments
The Supreme Court of Appeal (SCA) on Wednesday dismissed with costs an appeal brought by BMW South Africa against an earlier judgement relating to alleged infringements on the intellectual property rights associated with its spare parts designs by replacement parts importer and distributor, Grandmark.
BMW’s application against Grandmark was dismissed with costs this week, in the Supreme Court of Appeal.
In a protracted legal battle that began in 2010 and was first heard in the North Gauteng High Court in August 2011, BMW claimed that Grandmark had infringed on certain of its intellectual property rights by importing and selling spare parts that looked similar to BMW’s spare part designs for its models.
BMW submitted that Grandmark had infringed four of its aesthetic design registrations for a bonnet, headlight assembly, grille and front fender to fit BMW’s E46 vehicle model, as well as another 150 less clearly defined designs, and certain of BMW’s trademark registrations.
Grandmark’s counter-application challenged the registration of these designs as aesthetic, claiming that the designs lacked the requisite novelty and originality to support this classification. It said that BMW attempted to bypass provisions in the Designs Act, which protects intellectual property relating to logos and shapes of designs, that allow for the exclusion of spare parts when they are classified purely as functional designs. Designs that serve only a functional purpose cannot be registered under the act.
In a judgment delivered by Judge Natvarial Ranchod on 18 July 2012, BMW’s application was dismissed, with costs, and Grandmark’s counter-application was granted, revoking BMW’s design registrations in issue. The court held that BMW had not proved any aesthetic features pertaining to its designs that warranted protection under the aesthetic design register.
Judge Ranchod also ruled that Grandmark’s use of BMW’s trademarks did not constitute infringement as was claimed by BMW, but rather that the use of the BMW trademarks by Grandmark merely described the BMW vehicle models that Grandmark’s replacement parts were suitable for.
BMW chose to appeal the ruling, which was heard on 26 August 2013 by the Supreme Court of Appeal, led by Judge R.W. Nugent.
“The court agreed that every feature of the shape and configuration of a replacement body part is necessitated solely by the function which it is required to perform as a spare part. Therefore, the Designs Act has the effect of prohibiting the registration of at least the features of shape and configuration of a spare part as aesthetic designs,” explains SJ Pluke of SJ Pluke Attorneys, Grandmark International’s attorney.
“Grandmark contended in court that the spare parts for BMW’s E46 designs can only look one way if they are to perform their function as replacement parts for this vehicle. The shape and configuration of each of these parts is therefore dictated in its entirety by its function as a spare part,” she continues.
While the Designs Act allows for some design registrations to be filed as both aesthetic and functional, the Supreme Court of Appeal did not find application for this provision in the current case, ruling that the BMW’s E46 designs were wrongly registered as aesthetic designs.
“This ruling paves the way to loosen the monopolistic stronghold that original equipment manufacturers (OEMs) currently have on the local replacement parts market,” says Steven Ongchin, chief operating officer of Grandmark International. “It is hoped that parts distributors will now be more willing to stock a greater variety of replacement body parts for various OEM brands and models. This will contribute to the significant reduction in the cost of spare parts and will increase availability. Ultimately we feel that this ruling will allow consumers to realise that they have a choice when it comes to repairing their vehicles; it’s a win-win for all South Africans and their insurance companies.”
“We hope that this matter will breathe new life into the automotive parts market and open the doors for greater competitiveness, which will ultimately benefit South African consumers.”
Manager of group automotive communications at BMW, Edward Makwana, told RISKSA on Friday that BMW was still evaluating the judgement and would then decide on its next steps.
source http://www.risksa.com/bmw-loses-appeal-against-grandmark-on-design-infringements/
...and thereby giving Grandmark huge publicity
The Supreme Court of Appeal (SCA) on Wednesday dismissed with costs an appeal brought by BMW South Africa against an earlier judgement relating to alleged infringements on the intellectual property rights associated with its spare parts designs by replacement parts importer and distributor, Grandmark.
BMW’s application against Grandmark was dismissed with costs this week, in the Supreme Court of Appeal.
In a protracted legal battle that began in 2010 and was first heard in the North Gauteng High Court in August 2011, BMW claimed that Grandmark had infringed on certain of its intellectual property rights by importing and selling spare parts that looked similar to BMW’s spare part designs for its models.
BMW submitted that Grandmark had infringed four of its aesthetic design registrations for a bonnet, headlight assembly, grille and front fender to fit BMW’s E46 vehicle model, as well as another 150 less clearly defined designs, and certain of BMW’s trademark registrations.
Grandmark’s counter-application challenged the registration of these designs as aesthetic, claiming that the designs lacked the requisite novelty and originality to support this classification. It said that BMW attempted to bypass provisions in the Designs Act, which protects intellectual property relating to logos and shapes of designs, that allow for the exclusion of spare parts when they are classified purely as functional designs. Designs that serve only a functional purpose cannot be registered under the act.
In a judgment delivered by Judge Natvarial Ranchod on 18 July 2012, BMW’s application was dismissed, with costs, and Grandmark’s counter-application was granted, revoking BMW’s design registrations in issue. The court held that BMW had not proved any aesthetic features pertaining to its designs that warranted protection under the aesthetic design register.
Judge Ranchod also ruled that Grandmark’s use of BMW’s trademarks did not constitute infringement as was claimed by BMW, but rather that the use of the BMW trademarks by Grandmark merely described the BMW vehicle models that Grandmark’s replacement parts were suitable for.
BMW chose to appeal the ruling, which was heard on 26 August 2013 by the Supreme Court of Appeal, led by Judge R.W. Nugent.
“The court agreed that every feature of the shape and configuration of a replacement body part is necessitated solely by the function which it is required to perform as a spare part. Therefore, the Designs Act has the effect of prohibiting the registration of at least the features of shape and configuration of a spare part as aesthetic designs,” explains SJ Pluke of SJ Pluke Attorneys, Grandmark International’s attorney.
“Grandmark contended in court that the spare parts for BMW’s E46 designs can only look one way if they are to perform their function as replacement parts for this vehicle. The shape and configuration of each of these parts is therefore dictated in its entirety by its function as a spare part,” she continues.
While the Designs Act allows for some design registrations to be filed as both aesthetic and functional, the Supreme Court of Appeal did not find application for this provision in the current case, ruling that the BMW’s E46 designs were wrongly registered as aesthetic designs.
“This ruling paves the way to loosen the monopolistic stronghold that original equipment manufacturers (OEMs) currently have on the local replacement parts market,” says Steven Ongchin, chief operating officer of Grandmark International. “It is hoped that parts distributors will now be more willing to stock a greater variety of replacement body parts for various OEM brands and models. This will contribute to the significant reduction in the cost of spare parts and will increase availability. Ultimately we feel that this ruling will allow consumers to realise that they have a choice when it comes to repairing their vehicles; it’s a win-win for all South Africans and their insurance companies.”
“We hope that this matter will breathe new life into the automotive parts market and open the doors for greater competitiveness, which will ultimately benefit South African consumers.”
Manager of group automotive communications at BMW, Edward Makwana, told RISKSA on Friday that BMW was still evaluating the judgement and would then decide on its next steps.
source http://www.risksa.com/bmw-loses-appeal-against-grandmark-on-design-infringements/
...and thereby giving Grandmark huge publicity
