New Singapore Designs Act

Following 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.

One 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.

Currently, 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).

On 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.

Briefly, 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.

New Features

Still, 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.

One 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.

Another 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.

This gave rise to the curious Singapore case of Ang Lay See & Ors vs Solite Impex Pte Ltd [1998] 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.

Under 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.

The 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.

One 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.

Infringement

The 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.

The 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.

Damages 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 constitute infringement.

A Problem

One 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.

In 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.

Transitionals

What 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 are extinguished.

Correspondingly, 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.

A 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.

Conclusion

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.


M Ravindran
Ravindran Associates