Eva-Last Distributors (Pty) Ltd v Timmdek (Pty) Ltd and Another

The applicant, Eva-Last Distributors, is the proprietor of sixteen registered designs (both aesthetic and functional) for an 'arched deck board' used in decking, cladding, and flooring products. The designs were applied for on 16 August 2016 and registered on 31 August 2016, with no release date initially recorded. The applicant sought an interdict against the first respondent (Timmdek) for alleged design infringement. The first respondent opposed, arguing the designs were not novel and formed part of the 'state of the art' due to prior disclosure by the applicant at a public exhibition (Decorex). Most infringement issues were settled. In response to the state-of-the-art challenge, the applicant applied to amend the design registration certificates to include a release date of 27 April 2016. The second respondent (Zentia Trading t/a Best Deck), which had joined the proceedings later, opposed the amendment application, contending the amendments were not clerical errors and that the designs were never registrable.

• Whether the amendment to include a release date on registered design certificates is permissible under section 26(1)(b) of the Designs Act 38 of 1997.
• Whether the amendments sought constitute a correction of a clerical error or an amendment for which no express provision is made.
• Whether the proposed amendments would introduce new matter or alter the scope of the design monopoly.
• Whether the designs were registrable in the first place, given the second respondent's contention of lack of novelty.

The amendment application was granted. The applicant was given leave to amend the registered designs to record a release date of 27 April 2016. The registrar was requested to rectify the register and issue amended design certificates. The second respondent was ordered to pay the costs of the amendment application on a party-and-party scale, including counsel's costs on scale B.

An amendment to a registered design to include a release date is permissible under section 26(1)(b) of the Designs Act where the amendment does not alter the design itself (illustrations or descriptions), does not introduce new matter, and does not render the design invalid. The court will grant such an amendment where it facilitates the proper ventilation of a dispute and where the proprietor was entitled to the inclusion of the release date from the outset. The interests of third parties are protected where the amendment would shorten rather than extend the monopoly period.

The court noted that there is no direct jurisprudence dealing with this specific species of amendment under the Designs Act. It observed that the underlying rationale for the court's discretion to allow amendments is underpinned by its duty to protect the public from abuse of monopolies. The court also commented that if the second respondent's claim that the declaration in the initial design application contained a material false statement were true, this would be a ground for revocation under the targeted legislation, not a ground to oppose an amendment application under section 26(1)(b). The court further reflected that including a release date would shorten the monopoly period, not extend it.

This case provides rare judicial guidance on the interpretation and application of section 26(1)(b) of the Designs Act 38 of 1997, specifically regarding amendments to include a release date on design registration certificates. It clarifies the distinction between amendments to the design itself (which may be prohibited) and amendments to the design documents. It also reinforces the principle that amendment applications should be assessed by balancing the proprietor's rights against the public interest in preventing abuse of monopolies, and confirms that a failure to include a release date does not automatically constitute a material misrepresentation warranting refusal of an amendment.