the reading in Parliament of the Registered Designs Bill in June this year, M
Ravindran gives us a brief introduction to the changes that are about to take
place in the law relating to the registration of designs in Singapore.
of the marks of an independent nation is its capacity to pass substantive laws
of its own and administer those laws in accordance with its own unique public
policy considerations. It is in this regard that the law of registered designs
in Singapore is an anachronism.
for a design to be protected in Singapore, it must first be registered in the UK
under the terms of the UK Registered Designs Act 1949. Once registered there,
there is automatic protection in Singapore under our United Kingdom Designs
(Protection) Act (Cap 339).
30 June 2000, the Registered Designs Bill was read in the Singapore Parliament
which will correct this colonial hangover. It is believed that these laws will
come into force before the end of the year.
this law envisages the setting up in Singapore for the first time of an
independent Design Registry to allow for the registration of designs here
without any need for recourse to the UK. After 35 years of independence, the
apron strings are finally being cut.
the fruit does not fall too far from the tree. The new bill owes much of its
structure to the UK Registered Designs Act 1949. Indeed, many sections are
identical. Some instruction was also taken from another sibling’s
corresponding legislation, ie the Hong Kong Registered Designs Ordinance. In the
circumstances, the substantive law has not changed much.
new feature is the doing away of the need for a design to have eye appeal. Under
UK law, a design had to have eye-appeal to be registered. It was for this reason
that many people associated registered designs with fashion and style. In fact,
however, the eye appeal test was so watered down that almost anything could pass
the test as long as it could be noticed. The test was, therefore, subjective and
for that reason, this change is to be welcomed.
departure from UK law is in respect of the novelty requirement. Designs are
registrable if they are new. Under UK law, novelty was judged locally, ie a
design was considered new if it had not been published in the UK, regardless of
whether it had been published elsewhere.
gave rise to the curious Singapore case of Ang Lay See & Ors vs Solite
Impex Pte Ltd  2 SLR 365, where the plaintiff’s design had been used
in Singapore prior to the application for registration in the UK. It would
obviously have been unfair on equitable grounds for the plaintiff to succeed
although it was clear that the design could not be revoked under UK law. The
High Court found in favour of the plaintiff. The matter went up to the Court of
Appeal which, in dismissing the plaintiff’s claim, had to resort to an
argument based on absurd consequences.
the new Singapore regime, novelty will be judged internationally; the use of an
identical or similar design anywhere in the world prior to the date of the
application in Singapore would give grounds for the revocation of the
registration. In this regard, one should note that by virtue of the fact that
Singapore is a member of the Paris Convention and the World Trade Organisation,
anything published within the six-month priority period after the filing of the
basic application in a Convention country would not destroy novelty.
final major change from UK law is the maximum duration of the registration.
Under UK law, a design is registered initially for five years from the date of
the application. The registration may be renewed up to four times for a period
of five years each; therefore, the maximum duration of a design registration is
25 years. Under the new Singapore law, the maximum duration is 15 years, ie a
registration may only be renewed twice.
point of note is that usually the author of the design is the owner. As in
copyright, the design of an employee in the normal course of his employment is
owned by the employer. Where, however, a design is computer generated, then the
person who made the arrangements necessary for the creation of the design is
deemed the owner of the design.
registered owner of a design has the exclusive right in Singapore to, amongst
other things, make, import, sell, hire any article to which an identical design
has been applied or a design not substantially different from it has been
applied. The new law also specifically covers the situation where a kit is made
or sold where it consists of a complete set of components intended to be
assembled into an article for which the design has been registered.
usual intellectual property remedies of an injunction, delivery up and damages
or an account of profits are statutorily provided for. An exclusive licensee has
the same rights as the registered owner to take action, except that he may not
recover damages or an account of profits prior to his registering his interests
at the Design Registry.
or an account of profits will not be allowed where the defendant can show that
at the time of his actions, he was not aware or had no reasonable grounds to
believe that the design had been registered. In this regard, the defendant will
not be taken to know of the registration by the mere fact that the article in
question has the word ‘registered’ on it unless the number of the said
design was also marked. Potential defendants may also seek recourse under the
new law for groundless threats and for a declaration that their acts do not
of the vexing issues under the old regime was the overlap (or the lack thereof)
between artistic copyright and registered designs. Basically, under our
Copyright Act, designs which are registrable under UK law did not enjoy
copyright protection for the underlying artistic work. This worked a great
injustice to producers of textile designs or costume jewellery who produced
hundreds of designs in a year, all of which were registrable as designs. As
such, if they did not register these designs, they were left without remedy as
the Copyright Act snuffed out their rights under copyright. As can be imagined,
this encouraged all sorts of ‘innovative’ arguments in court as to why some
design was not registrable and therefore enjoyed copyright in Singapore.
the UK and Hong Kong, unregistered designs still enjoyed some measure of
protection. Unfortunately, the new laws in Singapore leave the lacunae gaping.
Owners of new designs have therefore to file design registrations, otherwise
their investments in creative works may go unprotected.
is the position, then, of UK registered designs? Basically, they continue to be
protected under the transitional provisions even after the new law comes into
force, provided they have not expired or been cancelled. Renewals of these UK
registrations, however, have to be lodged in Singapore otherwise these rights
applications filed in the UK under the Registered Designs Act 1949 prior to the
commencement date of the new Act in Singapore are also protected in Singapore if
granted. Again, at the time of renewal in the UK, the registered owner has to
file a corresponding renewal here, otherwise the rights in Singapore granted
under the transitional provisions will lapse.
quirk of note is that UK registered designs may be extended up to 25 years from
the registration date, whilst designs granted under the new Act can only be
extended for 15 years.
Design rights have traditionally been undervalued; patents are sexier and trademarks are more rampant. However, as technologies converge or come into the public domain, corporations will seek to differentiate their products from those of their competitors through innovative design. Who can deny that many people buy or covet the Mac PC, the Nokia 8810, the Volkswagen Passant or the Palm V simply because these items just look and feel better than the rest. Large sums of money are spent to obtain and maintain this competitive advantage in a demanding and unforgiving market and it is, therefore, entirely appropriate that the government has made it easier to register these rights.