BMW SA has decided to appeal against a judgment in the Gauteng North High Court affecting its rights to protect specific parts of its models listed in the Design Act.

BMW said if the judgment was not rescinded on appeal it could have ramifications for other motor manufacturers as well. "Then it just becomes a free-for-all," said the company's communications manager, Guy Kilfoil.

The court last month dismissed with costs an application brought by BMW against Grandmark International, a small importer and distributor of spare parts, which BMW claimed had infringed on its design rights by importing and selling spare parts - including bonnets, headlight assemblies, grills and front fenders - that were fitted to BMW models.

Mr Kilfoil said the company's board met this week and had decided to appeal. The court's consideration of a part such as a bonnet as a "completely functional item" that had no relevance to the design was "patently incorrect", he said.

Chris Job, senior partner at law firm Adams & Adams, which represents BMW and several other original manufacturers in the country, said there was "a high level of concern" by all the manufacturers.

They had approached his firm since the judgment was made in the Gauteng North High Court, expressing their concern about the effect of the decision.

"They will be affected by the decision since the court held that they are not entitled to the protection of their spare parts under the Design Act. Although the parts of a vehicle have a degree of functionality, they also have a high degree of aesthetics," he said.

Judge Natvarial Ranchod said it was not clear what merited the monopoly right BMW had sought to enforce over the design rights. He also said BMW's failure to identify any novel aesthetic features of its design was in his view "fatal to its cause of action for design infringement". BMW did not state in its founding papers what the aesthetic features of the design rights were.

Mr Job said: "An application for leave to appeal had been served. It is of fundamental importance for all (original manufacturers) that we bring this application . there are some serious issues at stake."

Nico Vermeulen, a director at the National Association of Automobile Manufacturers of SA, agreed the judgment could have broader implications for manufacturers, depending on the grounds of appeal and the outcome. He said companies involved in the manufacturing of spare parts could also be affected, but that it was necessary to allow the legal process to run its course.

Sara-Jane Pluke, legal representative of Grandmark, yesterday said it would "in all probability oppose the application", but would not comment further until it had seen the grounds for the appeal.

Denise van Huyssteen, spokeswoman for General Motors, said it was a legal issue between a competitor and an independent third party supplier. Until GM had studied the facts of the case, it was unable to comment, she said.

vissera@bdfm.co.za

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